Firebelt Pty Ltd v Brambles Australia Ltd

[2001] HCATrans 494

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Brisbane  No B52 of 2001

B e t w e e n -

FIREBELT PTY LTD

Appellant

and

BRAMBLES AUSTRALIA LIMITED trading as CLEANAWAY

First Respondent

COOLOOLA SHIRE COUNCIL

Second Respondent

THE STATE OF QUEENSLAND

Third Respondent

GLEESON CJ
McHUGH J
GUMMOW J
HAYNE J
CALLINAN J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON THURSDAY, 13 DECEMBER 2001, AT 10.22 AM

Copyright in the High Court of Australia

MR J.J.J. GARNSEY, QC:   May it please the Court, I appear with my learned friends, MR C.J. CARRIGAN and MR D.H. KATTER, for the appellant.  (instructed by Xavier Kelly & Co)

MR D.F. JACKSON, QC:   If the Court pleases, I appear with my learned friends, MR A.B. CROWE, SC and MR R.I.M. LILLEY, for the respondent.  (instructed by Deacons Lawyers)

GLEESON CJ:   There is a certificate from the Deputy Registrar that she holds a letter from Baldwin Conroy Lawyers, who represent the second respondent, advising that the second respondent will not participate in the hearing of the appeal and will submit to the order of the Court, save as to costs, and that she holds a letter from the Crown Solicitors Office in Queensland, who represent the third respondent, advising that the third respondent will not participate in the hearing of the appeal and will submit to the order of the Court, save as to costs.  Yes, Mr Garnsey.

MR GARNSEY:   If your Honour pleases.  Your Honours, this is an appeal from a decision of the Full Court of the Federal Court of Australia which dealt with an appeal from a decision of Justice Dowsett of the Federal Court.  The two judgments are found in volume 6 of the appeal book and the subject matter of the appeal concerns a petty patent which is found in, I think, two places in the appeal book but which is conveniently also found in volume 6 of the appeal book.

The central issues of difficulty which have led to this appeal are the failures of the respondents in their evidence at trial and, subsequently, we say as a result of the way the evidence was presented and of the nature and limitations of the evidence, failure of the trial judge and of the Full Court to recognise the nature of the petty patent as a true combination of interacting selected features and to apply what was thought to be well established, sometimes described as trite law concerning the nature of a true combination as an invention and the necessity to uphold it in relation to an objection as to obviousness.

If there is a scintilla of invention in the combination, the inventive step, we say, in patent law is not a matter of degree and ex post facto analysis, especially in the case of combination patents, is suspect.

Your Honours, they are all propositions which, as matters of law or statements of correct approach, are stated numerous times in this Court, considered to some extent most recently in Advanced Building v Ramset 194 CLR 171 and in the decision in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 144 CLR 253 and before that, particularly in relation to inventive step and the appropriate approach in relation to that and a combination patent and ex post facto analysis by Sir Keith Aickin in Meyers Taylor v Vicarr Industries 137 CLR 228 at pages 242 to 243 and 265. That was not on our list of authorities, if your Honours please. If I could hand to your Honours photocopies of those pages. Unless the Court wishes me to, I would not propose to read from the authorities to which I have referred, they being considered in this Court comparatively recently in Advanced Building v Ramset and subsequently in The Grain Pool of Western Australia v The Commonwealth 202 CLR 479 for a slightly different purpose.

I should, however, note that in Meyers Taylor v Vicarr Industries Sir Keith Aickin at pages 242 to 244 referred to Blanco White and “Patents for Inventions” and to Mr Justice Menzies of this Court in Commonwealth Industrial Gases v MWA Holdings at the top of page 243 and then set out Mr Justice Menzies quoting from Lord Russell in Non‑Drip Measure Co v Strangers in a slightly more full extract than appears subsequently in the 3M Case, in the first paragraph of which, that being the paragraph which Sir Keith Aickin cited in the 3M Case, there is reference made to Lord Justice Fletcher Moulton in British Westinghouse v Braulik.

GUMMOW J:   Is not the problem for you that, though one might not be entirely happy with all that is said in the trial judge or the Full Court on some of these matters of principle, at the end of the day you have to overcome the evidence which seems, on one reading of it, to be sufficient to base a finding of obviousness, in particular, the evidence of Mr Ahrens.

MR GARNSEY:   That is the central issue, if your Honour pleases, and I would seek to deal with that and if it is convenient I will deal with it now.  I seek to deal with it ‑ ‑ ‑

GUMMOW J:   He is in‑chief at volume 2, page 313, and in cross‑examination in volume 4, is he not?

MR GARNSEY:   Could I hand to your Honour a schedule which we have prepared which has references to the respondents’ witnesses’ affidavits with corresponding references to cross‑examination and before going to those passages briefly there is one point we want to make which is, we submit, of fundamental importance in dealing with the matter that your Honour Justice Gummow just raised, and it is this:  before the trial judge there was an objection taken in addition to the objections to validity on the ground of want of novelty and lack of inventive step of no manner of manufacture, that is, not an invention within the meaning of the Act.  That was found in favour of the appellant by the trial judge at trial and was not the subject of contention on appeal and is not in dispute.

The reason why that is significant in relation to the evidence is this, that when one looks at the evidence‑in‑chief of all the relevant respondents’ witnesses, it was presented in this fashion – and I will seek to make this good by going to the passages.  It was presented to say “All these features in the petty patent, for one reason and another, individually I knew of these features along with a whole lot of other things.  Therefore, the patent was not an invention within the meaning of the Act, was not a manner of manufacture, it was a mere collocation, being not a true combination.  I would have had no difficulty just selecting and putting them together”.  In each of these witnesses there is a paragraph which says, “For those reasons the invention is not a manner of manufacture, it is not an invention within the meaning of the Act, it is a mere collocation.”  There is a subsequent paragraph which says, “For the same reasons it is obvious”.

GUMMOW J:   Does Part 3.3 of the Evidence Act – Justice Callinan reminds me – permit this sort of thing in these statements now by expert witnesses?

MR GARNSEY:   It may perhaps and ‑ ‑ ‑

GUMMOW J:   That is why these things get in.

MR GARNSEY:   Yes, yes, your Honour and ‑ ‑ ‑

GUMMOW J:   These statements all got in.

MR GARNSEY:   Yes, your Honour.  Well, the trial judge was a little negative about objections as to evidence.

GUMMOW J:   Maybe or maybe not.

CALLINAN J:   Nobody seems to be bothered about the rules of evidence these days.

MR GARNSEY:   Your Honour, Justice Einstein in the Supreme Court of New South Wales over the last 18 months or so has delivered a large number of very lengthy judgments on this very point.  They do not really, with the greatest respect, advance matters much more than the Act.  But the point I am seeking to make is not as to the admissibility, your Honour, all I am seeking to make is this, that if one has the evidence just saying there are all these things, there are all these integers, being six of 20 or 30 integers in the area that I know about, and there is mere collocation and no manner of manufacture for that reason and that is decided against the respondents, at the same time the evidence - that decision means one has a true combination with the integers inter‑reacting to produce a new result on their product.

That being so, for the same evidence to be relied on, to say there is no inventive step in the combination when one looks at the evidence, there is no analysis of the combination of the petty patent as to how the integers work together and there is no analysis in the expert evidence, no reasoning of how the features that it is said could be combined, as a matter of course, to make the petty patent obvious, how those features operate together, especially when the basic matter relied upon to show the invention is obvious is a prior disclosure, that is a presentation by a company called TWT Formark of a Mr Hickey’s invention, which happened twice in 1991, and is a disclosure, if anything – and there is doubt on the evidence as to what was disclosed – of a combination, and a combination on the evidence which is unchallenged without three of the features, three of the integers of the subject patent, the petty patent, and with an additional integer, namely a butterfly plate, and with an absence of any explanation of another integer, that is, how, when, where and by what one opens the lid ‑ ‑ ‑

GUMMOW J:   There is no claim for the butterfly, is there?

MR GARNSEY:   No, not in ‑ ‑ ‑

GUMMOW J:   Why is everyone obsessed with it? 

MR GARNSEY:   Because, your Honour, that is what the evidence said was the prior disclosure, which somehow or other ‑ ‑ ‑

GUMMOW J:   But you do not claim the butterfly? 

MR GARNSEY:   No, we do not.  I am sorry, your Honour, I am perhaps moving a little too quickly, and I do need to go to it in some little detail, but ‑ ‑ ‑

GUMMOW J:   The alleged anticipation had it. 

MR GARNSEY:   Yes.  The trial judge found that TWT Formark was not an anticipation of the petty patent, but he then found – and the Full Court upheld his Honour – that that disclosure of TWT Formark which had the butterfly plate, which did not have three integers of the subject patent, and which was silent as to how, when, where or why, and, we say, was not at all concerned with how one opens the lid on the wheelie bin.  There were those five matters that were not the subject of any reasoning or analysis, on the evidence presented at trial, and, we say, were the subject of unsupported speculation by the trial judge – upheld by the Full Court – to get to the stage where there was no inventive step in the subject invention claimed in the petty patent – a completely different combination.  That is what Sir Keith Aickin dealt with in the passage from his Honour’s judgment in Minnesota Mining and Manufacturing, quoted in part by the trial judge, more fully by the Full Court ‑ ‑ ‑

GUMMOW J:   Yes, we know all that.  You have to get down to the ground and start looking at the evidence of Mr Ahrens and Mr O’Dwyer. 

MR GARNSEY:   I am endeavouring to get down to the ground, your Honour, but I wanted to make the point that the no manufacture point was decided in our favour, on the same evidence, upheld – it was not the subject of appeal to the Full Court.  The evidence being the same, it is the findings of his Honour, as to lack of inventive step, and the Full Court, we say, are inconsistent, and also involve some speculation not supported by any evidence.  Now, can I turn to the evidence, if your Honour pleases, perhaps by reference to the schedule.  We do deal with Mr Ahrens first:  first, in volume 2 of the appeal book – his affidavit.  My friend has only referred to the cross-examination, but, with respect, the cross-examination was on the affidavits, and one must use those, we respectfully submit, as the starting point. 

GUMMOW J:   The relevant passage starts on page 313 paragraph 21, does it not?

MR GARNSEY:   Can I first go to page 311, your Honour, because it leads up to it, paragraph 17 – and these paragraphs I am referring to are what might be called “common form” throughout the witnesses on the schedule:

I have been informed by Chris Goodhew and verily believe that the features of claim 1 in the petty patent . . . are ‑ ‑ ‑

GUMMOW J:   Mr Goodhew being whom?

MR GARNSEY:   Mr Goodhew is a patent attorney from Pizzey.  He had originally put on an affidavit at trial which was the only expert evidence, which listed a whole lot of features, listed a whole lot of prior art and said, “You can find some in this bit of prior art and some in that bit of prior art”.  We objected to that, and our learned friends then put on the affidavits from Mr Ahrens, O’Dwyer & Brown.

So there are the features, or integers, listed there as put out by Mr Goodhew and with some slight difference adopted by the trial judge.  Then, in paragraph 18, Mr Ahrens said:

I do not disagree with Mr Goodhew’s view as to the features –

and then he says at paragraph 19:

I have been informed by Mr Goodhew that an invention claimed as a combination of elements which I understand to be obvious . . . does not necessarily render such invention “obvious” as in lacking an inventive step.

I am also informed by Mr Goodhew that a combination of known elements each performing their usual function without a clear new working interrelationship might not be regarded as a manner of new manufacture, and that a combination of elements that is made by the sum of a prior use or other single publication before the relevant priority date with the common general knowledge in the art, may lack inventive step.

That is based obviously on section 7 of the 1990 Act, subsections (2) and (3), which says one can have a single prior public use or public publication plus common general knowledge.  Then in paragraph 21 he says:

Prior to 21 October 1994 each of the features was known to me in that:

(a)  I knew that each of the features had been used . . . and

(b)  each of the feature was a concept which I would resort to in the planning of a waste disposal body for a truck having regard to the requirements of the customer –

Then, in paragraph 24 he says:

each of the features was known to me in that:

(a)  I knew that each of the features was included in a concept developed by TWT Formark and promoted by it late in 1991 ‑ ‑ ‑

GUMMOW J:   Now, what is that significance of October 1992 as the date?  Is that after the priority date?

MR GARNSEY:   Your Honour, there was a rather complicated question about priority date.

GUMMOW J:   There was, but at the end, what is the priority date?

MR GARNSEY:   10 February 1992.

GUMMOW J:   So, this is after the priority date.

MR GARNSEY:   Yes, but it was a live issue at the trial.

GUMMOW J:   Yes, I understand that.  We are not worried about that.

MR GARNSEY:   No, your Honour.  Paragraph 24, in (a) he says:

I knew that each of the features was included in a concept developed by TWT Formark and promoted by it late in 1991.

Now, that evidence was rejected by the trial judge based on a much more direct factual evidence.

GUMMOW J:   I am sorry, what evidence?

MR GARNSEY:   That there was an anticipation, or rather, just that each of the features was included ‑ ‑ ‑

GLEESON CJ:   So how do we tell which of this evidence was allowed in and which was not?  Are you telling us that (a) was rejected?

MR GARNSEY:   No, your Honour.  I am saying that (a) – his Honour held that that was not the case.

CALLINAN J:   There was a finding against it.

MR GARNSEY:   There was a finding against it, yes.

GLEESON CJ:   I see.  It was the proposition of fact that was rejected, not the evidence.

MR GARNSEY:   Yes.  I am sorry, your Honour, yes.  That is because his Honour found that TWT Formark had the butterfly plate and did not have three of the integers of the petty patent.  Then in paragraph 30 at page 314 ‑ ‑ ‑

GUMMOW J:   What about paragraph 24?

MR GARNSEY:   I am sorry, I thought I had – yes, I am sorry:

each of the features was a concept which I would resort to in ‑ ‑ ‑

GUMMOW J:   That is the priority date, 10 February 1992.

MR GARNSEY:   Yes.

CALLINAN J:   But you say that the trial judge made findings adverse to paragraph 24.

MR GARNSEY:   To subparagraph (a).

CALLINAN J:   Subparagraph (a).

GUMMOW J:   I do not understand that.  He disbelieved the witness knew these things?

MR GARNSEY:   He did not deal expressly with the witness in that respect but his Honour found – and he deals with this in the section on novelty in his Honour’s judgment, analysing the evidence at great length – that in the TWT Formark presentations there was reference to a butterfly plate and that the TWT Formark presentation did not have three features, or integers, of the petty patent and, if one looks at the list in volume 6 at page 1260, which is the trial judge’s list, they are (f), (g) and (h).

GUMMOW J:   Any how, it does not matter particularly, does it, for the weight of paragraph 24?

MR GARNSEY:   No, your Honour.  Then, in (b) ‑ ‑ ‑

GUMMOW J:   It is (b) that matters, is it not?

MR GARNSEY:   Yes.  He makes that statement and then he proceeds, having referred to particular matters.  He says in paragraph 30 on page 314:

In the circumstances I conclude that most if not all manufacturers in Australia are aware of the individual features and uses to which they can be put and have been so aware since at least the time the TWT Formark became known in the industry in 1991/92.

Now, that statement is also affected by the subsequent finding of the trial judge to which I will take your Honour in greater detail.  He then proceeds, having noted at page 315, in paragraph 35, that:

Loading mechanisms having lid opening devices . . . have been used in the waste management business in Australia since –

the late 1980s, and further matters in paragraph 36, at page 316.  At paragraph 40, he said:

In the claims of the petty patent, each of these elements perform the same function that they have done since before the priority date which I am advised is claimed to be 10 February 1992.

He seems to be talking there about the integers of the petty patent being integers which he says were known before the priority date as individual integers.  He then says:

Although the specification describes an invention of a working combination, it is not the invention claimed.  There is no working combination between the features of claim 1 of the petty patent.

GUMMOW J:   Well, (a), that is a proposition of law, and (b), it is going to another issue.

MR GARNSEY:   Yes, and (c), it was found against the respondents and held against the ‑ ‑ ‑

GUMMOW J:   Paragraph 41 is going to another issue too.

MR GARNSEY:   Yes.

GUMMOW J:   It is really paragraph 42, is it not?

MR GARNSEY:   Yes, indeed, your Honour, but why, with respect, I have rather tediously sought to lead up to paragraph 42 is that, perhaps because of the new Evidence Act, the statements in the affidavits are rather wide.  They can only be taken as establishing the full content by reference to the other evidence in the trial.

HAYNE J:   Sorry, I do not understand the proposition.  What is the proposition?

MR GARNSEY:   Your Honour, to say that features perform the same functions that they always have or, in paragraph 42, there is a list of obvious features to a person skilled in the art ‑ ‑ ‑

HAYNE J:   No, the 42 is a statement of the witness’s conclusion.

MR GARNSEY:   Yes, your Honour, and he is concluding that, if one looks at his evidence up to this time, that there were these individual features which are a mere collocation and the putting together of which is also obvious to him.

HAYNE J:   He has earlier given some reasons.  What follows?  What is the proposition you are contending for?

MR GARNSEY:   He has not given the reason - he has not given any reason relating to the interrelationship of the features as an inventive combination.

HAYNE J:   Assume that, for the moment, to be so.  Assume that what precedes this paragraph in his affidavit either does not at all, or at least does not sufficiently, explain the reasoning which underpins paragraph 42.  What follows from that?

MR GARNSEY:   That when one comes to look at what the trial judge did and what the Full Court upheld, that is to say, because of the disclosure in TWT Formark, Hickey, which is itself a disclosure of a combination, plus something in common general knowledge, not explained, therefore, the different inventive combination of the petty patent lacked an inventive step.  When one looks at the reasoning of the trial judge and the Full Court, we respectfully submit, one does not get any basis on the evidence for it.

CALLINAN J:   Mr Garnsey, leaving aside the question whether paragraph 40 states a matter of law or not, did the trial judge reject it?  Did his Honour say that it was wrong for the witness to say the specification describes an invention of a working invention which is not the invention claimed?  I ask you that because it seems to me that it is arguable that paragraph 42, the conclusion in paragraph 42 depends, in any event, essentially upon that sentence.

MR GARNSEY:   His Honour held both those sentences in paragraph 42 to be wrong.

CALLINAN J:   Is that ‑ ‑ ‑

HAYNE J:   In 42?

MR GARNSEY:   I am sorry, in 40, I am sorry, your Honour.

CALLINAN J:   Does that damage in any way the foundation for saying what is said in 42?

MR GARNSEY:   Indeed, your Honour; that is my very submission.

HAYNE J:   Why?  We are here not to conduct an originating summons construing the affidavit.  We are here to consider, are we not, the whole of the evidence?

MR GARNSEY:   Yes, your Honour.

HAYNE J:   This is the witness’s evidence‑in‑chief.  It is received as such, including this statement in 42 of conclusion.  If things stopped at that point, would it have been open to the trial judge to have accepted the assertion contained in 42 – open, not compelled?

MR GARNSEY:   It would have been open, but what was being accepted was no more, if your Honour pleases, than saying, if one looks at what is in the affidavit, that there are just all these features, they are just a mere collocation, they are not a working combination and they are obvious.  It does not say, “And if they were a working combination, there would be obvious – it would lack an inventive step”.  The point is there is no analysis, no reasoning to say, “I examine the petty patent as a true combination”, which it has been found it is.

HAYNE J:   That is to say, there are arguments that can be advanced which would amount to saying the conclusion in 42 is not soundly based.

MR GARNSEY:   Yes.

HAYNE J:   Were those matters explored with the witness in cross‑examination?

MR GARNSEY:   Yes, and I have given the references on that schedule.

HAYNE J:   Does it not then come to whether the exploration of those matters in cross‑examination was or was not persuasive to the mind of the judge?

MR GARNSEY:   Not only, your Honour, because ‑ ‑ ‑

HAYNE J:   What more is there?

MR GARNSEY:   Because his Honour had to go on and say, “Although I’ve found there is a true combination of the petty patent, I find that the TWT Hickey disclosure, which is itself a combination, means” - along with something else which is not really defined in his Honour’s judgment and which is not referred to at all in the evidence – “that the petty patent lacks inventive step.  To reach that conclusion, I’ve got to first, in relation to TWT Hickey, say it showed that you had to open a lid.  I assume somehow or other that this different combination deals with when, where, how and why and by what means you open the lid, but that is not defined anywhere.  I assume that this different combination would disclose to a person skilled in the art the same thing as the petty patent if you ignore where it starts and if you subtract the butterfly plate, a matter of which there is simply no evidence” – none of those matters.

GUMMOW J:   At the end of the day why was not the judge – forget about how he expressed it.  Why would it not have been open to him to accept this expert witness?

MR GARNSEY:   Because this expert witness, even when cross‑examined ‑ ‑ ‑

GUMMOW J:   Granted infelicities in his Honour’s expression of how he accepted it, if he had done it rightly according to you, why was it not open to him to ground that in this material?

MR GARNSEY:   Because he had not done it rightly.  All he said was, “There’s a list of things which are a mere collocation”, with respect.  That is the sum total of the evidence.

McHUGH J:   Your point is that the witness did not say it would have been obvious to select these integers as the combination which the invention ‑ ‑ ‑

MR GARNSEY:   Indeed, your Honour, and that is what we sought to make good in our outline of submissions and that is what Sir Keith Aickin, in the passage from 3M which was set out, perhaps ad nauseam, in the papers.

GUMMOW J:   We had better understand it.  Where is this particular passage in your submissions where you say there is what you ‑ ‑ ‑

MR GARNSEY:   The passage is set out for convenience at page 7 of our outline of submissions.

GUMMOW J:   That is the passage from the judgment.  I thought you were accepting a proposition that Justice McHugh put to you as one that you had already written down in your submissions?

MR GARNSEY:   We have, with respect ‑ ‑ ‑

GUMMOW J:   Just tell me where.

McHUGH J:   I think it might be paragraph 18, second line, is it?

MR GARNSEY:   Yes, your Honour, paragraph 18.  We go through what Sir Keith Aickin said we should do in particular at 18 and then ‑ ‑ ‑

McHUGH J:   Paragraph 42, I take it on your submission, is no more than a laundry list of features which are obvious but do not really address the relevant question.

MR GARNSEY:   Features which were known, query whether as part of common general knowledge, if one takes TWT Formark as a public disclosure and not part of common general knowledge – and the evidence rather messy in that respect.  But it is just a laundry list of known features and the central point which we sought to hone in on there and then develop in relation to the legal basis later is that there is simply no evidence the way the respondents presented their case and expert evidence of the lack of inventive step in the selection from the numerous known integers.  That is what Sir Keith Aickin in that passage is emphasising, both as a matter of principle and then in relation to combination patent, explaining the correct approach in the second paragraph and, in particular, in the underlined portion on page 7.

GUMMOW J:   So your complaint is that if paragraph 42 had been properly drawn, it would have to have taken into account those points made there at 18.

MR GARNSEY:   Yes.

HAYNE J:   And that there is a difference between a list of obvious features and an obvious selection of features.

MR GARNSEY:   Yes, your Honour, and I, with respect, would prefer to put it a difference between a list of known features.

HAYNE J:   Yes, I was taking the witness’s expression.

MR GARNSEY:   Yes, if your Honour pleases.  Your Honours, then what the trial judge did – and we explain this in 19 and 20 – is speculate, with the greatest respect, about the butterfly plate.

GUMMOW J:   What has the butterfly plate got to do with…..when what is said to be obvious is claim 1, which does not claim a butterfly plate?

MR GARNSEY:   Well, TWT Hickey proposal ‑ ‑ ‑

GUMMOW J:   I know that.  That was a ‑ ‑ ‑

MR GARNSEY:   What it does – the butterfly plates in TWT Hickey – and it is not in ours, if your Honour pleases.

GUMMOW J:   I realise that.  That is right.  There was a prior disclosure which had extra matter in it.  So what?

MR GARNSEY:   It did not only have – it was a prior disclosure of a combination which had extra matter.  It did not have three features, (f), (g) and (h), and also did not address the opening of the lid as part of the disclosure through the invention of the TWT Hickey Formark.

GUMMOW J:   Yes.

MR GARNSEY:   So, with the greatest respect, it is not just a matter of having one extra bit.  It is a ‑ ‑ ‑

GUMMOW J:   I am just puzzled as to why it became such a matter of excessive interest in relation to the obviousness point, that is all.

MR GARNSEY:   Your Honour, at the trial there were ‑ ‑ ‑

GUMMOW J:   There were pages and pages of evidence about it at the trial.

MR GARNSEY:   Yes.

McHUGH J:   It seems, in some way, that eliminating the butterfly plate was regarded as an inventive step in itself.

MR GARNSEY:    That is what the trial judge would have to - or could have been an inventive step.

McHUGH J:   Yes.

MR GARNSEY:    Or was not an inventive step, but the point is, as we submit in 20, if one looks at his Honour’s reasoning, and the Full Court only quoted one sentence from ‑ ‑ ‑

GUMMOW J:   Perhaps we should look at his Honour’s reasoning, should we?

MR GARNSEY:    Yes, your Honour.  We set them out - if one goes back - I have set them out in the submissions, if your Honour pleases, in paragraphs - initially the Full Court, in paragraph 16, the central part of its reasoning, with the paragraph numbers from the IPR reports, Intellectual Property Reports there.  In paragraph 42, the Full Court said:

The Firebelt invention does not require the use of a butterfly plate, which, his Honour found, was featured in the 1991 TWT Formark proposals.  This finding was erroneous, according to the appellant.  Of the absence of a butterfly plate in the Firebelt invention, the primary judge held:

“There was no suggestion that dispensing with the butterfly plate, by itself, was an inventive step, nor was there any basis in the evidence for such a claim.”

Now, if one turns over the page to paragraph 17, the full passage from the trial judge’s reasons are set out there.  The two paragraphs leading into the paragraph in which the Full Court quoted are set out and then the paragraph from which the Full Court quoted is underlined and the quote is in italics.  Now, one can look there at the trial judge reasoning towards dispensing with the butterfly plate.  The point about it, as we submit in paragraph 20, having referred to what we say there is a principle in 18 and 19 - the point about it in paragraph 20 is that it involved reasoning as to a number of matters which we have listed in (a) to (d) about which there was no evidence.

GLEESON CJ:   Mr Garnsey, as I understand it, you say paragraph 42 is merely a statement that the features are obvious and not evidence that the combination of features is obvious.

MR GARNSEY:    Yes.

GLEESON CJ:   Well, was not that deficiency in the evidence cured on page 881, volume four?

MR GARNSEY:    Your Honour is referring to the answer?

GLEESON CJ:   Cross‑examination.

MR GARNSEY:    If your Honour pleases.

GLEESON CJ:   The cross‑examination on paragraph 42.

MR GARNSEY:    Your Honour, we submit not, for this reason ‑ ‑ ‑

GLEESON CJ:   Well, you put to him that the combination was not obvious and he disputed that proposition and gave reasons for it in the long answer in the middle of page 881.

MR GARNSEY:    Your Honour, he was being cross‑examined on his affidavit.

GLEESON CJ:   On paragraph 42.

MR GARNSEY:    Yes.

GLEESON CJ:   And back on page 878, you had drawn his attention to the significance of the combination, that is 878, lines 13 and 14.

MR GARNSEY:    Yes, and then, if your Honour pleases, he gives answers about a number of things, including Hickey’s, at the bottom of page 879.

GLEESON CJ:   At the bottom of 881 and the top of 882, he says, distinctly, “the combination . . . was obvious”.

MR GARNSEY:    Yes, and he said:

it was obvious if you looked at what Colin Hickey was doing with his split truck.

Now, if one looks at the preceding cross‑examination, at no stage was he asked anything about how particular integers related or did not relate, one with the other, either as to the TWT Hickey disclosure or as to the true combination of the petty patent.

GLEESON CJ:   But what I am suggesting to you is that, whether his evidence was weighty or not, the deficiency that you point up in the wording of paragraph 42 of his affidavit no longer existed by the time his cross-examination had finished. 

MR GARNSEY:   But, with respect, for the trial judge to accept that, his Honour had to engage in the reasoning that his Honour engaged in.

HAYNE J:   Why?  Why could the trial judge not simply accept the evidence of Ahrens in this respect?  Why did he have to engage in a process of reasoning? 

MR GARNSEY:   Because Mr Ahrens’s evidence was expressed in general terms as a conclusion which, if it is to be accepted as expert evidence, must show the steps from the specialised knowledge gained by training, study or experience under section 79 of the Evidence Act ‑ ‑ ‑

HAYNE J:   Why?  Once he is qualified, why can the expert not simply go into the box and say, “My answers to the questions are (1) yes, (2) no, (3) maybe”, leaving it to the cross-examiner to explore the sufficiency of the reasoning that leads the expert to those answers? 

MR GARNSEY:   Because this Court, in a case which I am endeavouring to remember, in particular, a judgment from his Honour the Chief Justice, has said that that cannot be done under the new Evidence Act, and one must have proper reasoning linking – first, having qualified the expert, the subject matter that he takes into account to give his opinion must be identified, and there must be the reasoning in the steps up to ‑ ‑ ‑

GLEESON CJ:   We are not concerned here with admissibility of evidence. 

MR GARNSEY:   No, your Honour.  What I am putting to your Honour is this.  For his Honour to accept that, he says, “I think it was obvious if you looked at what Collin Hickey was doing with his split truck:, he has not given any reasons for that and the trial judge has supplemented that.  The trial judge did not just accept him, with the greatest respect.  The trial judge went through a process of ‑ ‑ ‑

GLEESON CJ:   Where did the trial judge deal with this evidence at page 881 and 882? 

MR GARNSEY:   In volume 6, at page 1249, under “INVENTIVENESS”, he, at page 1251, line 31, starts dealing with Mr Ahrens.  He says, he is:  “the general manager of an engineering company” and ‑ ‑ ‑

GLEESON CJ:   But now, on page 1252, line 17, he refers to pages 252 and 253 of the transcript. 

MR GARNSEY:   Yes. 

GLEESON CJ:   Now, it is suggested to me that they match pages 881 and 882 of our appeal book.  So he is there referring to the cross-examination that we have just been talking about. 

MR GARNSEY:   Yes, but what his Honour went on to do is, having referred to further evidence at the bottom of 1254, say at line 25:

The evidence from the experts satisfies me that prior to 10 February 1992 the content of the disclosures at the TWT Formark presentation had passed into common general knowledge or, alternatively, was prior art information that a skilled person in the industry could reasonably be expected to have ascertained, understood and regarded as relevant to his or her work in that area.  The apparent extent of distribution of such information to the various witnesses and their opinions as to its relevance demonstrate this.  The occasions on which the disclosures occurred must inevitably have led to their content being widely disseminated amongst persons having the relevant skills and interests.  Thus, the inventiveness of the petty patent claims must be measured against the ideas disclosed by Mr Hickey.

Then, at 1255, he said:

In the end, the applicant took two approaches to the question of inventiveness.

GLEESON CJ:   It looks as though all of this was going on before some inventive person came up with the idea of having two bins, which is what happens in Sydney now.

MR GARNSEY:   Your Honour, with the greatest respect, that is another aspect which we deal with in our submissions in reply which leads away from this evidence.  We submit at the end of the day, if one looks at the gross imperfections of this evidence, in the light of the trial judge’s finding that there was a true combination, a manner of manufacture, and if one looks at the objective evidence about commercial success and the developments being the other way, none of that – this evidence cannot be relied upon to satisfy the onus in relation to ‑ ‑ ‑

GLEESON CJ:   Just so that I can understand part of the evidence, Mr Garnsey, is the importance of the mechanism for opening the lid of the bin all related to the fact that the bin has two compartments?  If, as now happens in most places, you have one bin for the compostible material and one bin for the recyclable material, you just let the lid open as a result of tipping it upside down.

MR GARNSEY:   Yes.  Your Honour, the way in which refuse is collected depends on a variety of factors – and recyclables.  One is what is practical to be done given the geographical content locality, et cetera.  For instance, in Paddington one cannot have a truck which reaches over, smashes the cars parked along the side of the street and seizes the bin, or indeed in Mosman I have to say.  One has separate trucks with separate containers, separate collections and runners dodging in and out to retrieve the bins.  In the more salubrious parts of Australia where Firebelt has a lot of contracts – and one sees this perhaps in the outer suburbs in the Hills district et cetera, the bins are wheeled out to the edge of the road and they can be collected by a truck with one driver and a mechanism off the side.  Now, it is that situation which the invention is concerned with, in relation to the overall context of rubbish collection.

McHUGH J:   I thought the importance of the invention was that it enabled the lid to be kept out of the path of the falling waste so that it would not foul up the chutes that ‑ ‑ ‑

MR GARNSEY:   Indeed it did, your Honour, and I was just going to progress to say that in answer to his Honour the Chief Justice, that where one has a lifting mechanism for the bin into the truck and the bin itself is divided into refuse and recyclables, there is a problem of cross‑contamination if the bin lid is opened too early and is not in the right position for ‑ ‑ ‑

GLEESON CJ:   That is what prompted my question.  If you had two separate bins, as they do in the areas that you have just described as salubrious, which are, some of them, a little closer into Sydney than the one that you mentioned, you do not have the problem, you can let the bin lid flap a bit, I suppose, can you?

MR GARNSEY:   If the bin has only got refuse in it or only got recyclables in it – that is separate bins – then it does not really matter because one goes into one truck, another goes into an another truck or one goes into one section of one truck and the other goes into another section of that truck, but we are not concerned with that here.  Here, if your Honour pleases - and I have not taken your Honour to the specification first - one is concerned with collecting refuse and recyclables in the one bin but in different compartments in the one bin.

GLEESON CJ:   Yes.  I understand you complain of the attention that was devoted to the lid‑opening mechanism in the reasoning in the judgments below but I was just curious about that matter of fact.

MR GARNSEY:   Yes.  But, your Honour, it is relevant, for reasons that we have pointed out in our submissions in reply.  That was a document which I hope – that was dated 12 December.  Your Honour, we were more or less on time but the appeal books were a little late in preparation.  In paragraph 6 of those submissions in reply we submit the evidence strongly indicates there was an inventive step reported, evidence of commercial success, evidence of admissions of a true combination by Brown and Ahrens, contrary to their sworn evidence in their affidavits, first up.  That was upheld by the trial judge, and then:

O’Dwyer Browne and Ahrens all supported contrary industry development to the direction of the invention of the Petty Patent –

This was at the time.  One of the contrary industry development was different trucks, as your Honour has mentioned, with different containers for refuse and recyclables.

McHUGH J:   The means of opening the lid was not itself part of the invention, was it?  It was not claimed?

MR GARNSEY:   Not in particular means.  Can I take your Honour to the entered ‑ ‑ ‑

McHUGH J:   How was it done, by a jet of water, or compressed air or something?

MR GARNSEY:   Yes, in one of the embodiments in the patent it was.  If your Honour looks at volume 6 – yes, a figure 4.  Does your Honour see a number 31?

McHUGH J:   Yes, there is the jet.

MR GARNSEY:   One figure 4.  Yes, there is a jet of water and that was situated – it was a lid‑opening device on the loading mechanism.  Can I ask your Honours to turn to the features or integers which are found at the end of the trial judge’s reasons at page 1260 in volume 6?  Now, features (a) through to (k) divide up the first claim in the petty patent and this was found to be a true combination, as I have said, but one can see that from a mere examination of those claims that one has the vehicle with “a cab” and “an elongate refuse storage tank” with separate sections.  In (d):

a loading mechanism adjacent to the side of the refuse vehicle and ‑ ‑ ‑

GLEESON CJ:   What about (h)?

MR GARNSEY:   And (h), well, exactly, if your Honour pleases.  The loading mechanism has “a lid opening device”.

McHUGH J:   That is (f).

MR GARNSEY:   The lid‑opening device raises the lid.  That was dealt with by the trial judge and by the Full Court at page 1220, lines 20 to 25, initially.  Your Honours see, starting at line 19:

The claims refer to “ … the loading mechanism having a lid opening device and the loading mechanism being adapted to engage a bin … , raise the lid and empty the bin …”.  The words “adapted to raise the lid” refer to the loading mechanism as a whole, not to the lid opening device.

That is consistent with his Honour’s analysis at page 1251, lines 20 to 26, and with the Full Court’s statement at page 1291, lines 20 to 21.

McHUGH J:   Mr Garnsey, can I tell you the problem I have with the case.  I have a feeling that if I was the trial judge I would have held that it was an inventive step and I might not have been so keen to accept the evidence of Mr Ahrens.  Given what he said at pages 881 to 882 and the trial judge’s findings as appear at page 1252, in the end, is it not just a question of fact?

MR GARNSEY:   No, your Honour, because what the trial judge said – he did not just say, “That is a good, general answer, Mr Ahrens.  It is okay under the new Evidence Act.  I will take it and there it is.”  What his Honour did was say, “On the evidence in this case the lack of inventive step in the subject petty patent, the true combination, is shown by the TWT Formark disclosure plus some undefined bits of common general knowledge.”  When one looks at the evidence on which his Honour bases that, one has the affidavits of Mr Ahrens, Mr O’Dwyer and Mr Brown, and they are on that schedule I have given up, and the paragraphs are common form directed to a laundry’s list, saying “no invention within the Act ‑ no manner of manufacture” and/or “obviousness”.  When cross‑examined most of them admitted, “Yes, true combination”.  I was wrong as to that, not a laundry list.  There is nothing in the affidavits to suggest any examination of the true combination of the petty patent or of the TWT Formark.  His Honour, looking at that evidence, had to go to the TWT Formark disclosures, and what his Honour did when his Honour ‑ ‑ ‑

McHUGH J:   I know what his Honour did and I understand and I appreciate, I think, the force of your submissions that some of the reasoning is somewhat unsatisfactory, or failure to disclose the process of reasoning is somewhat unsatisfactory, but the judge and the Full Court both stated the appropriate principles, there was evidence upon which they could reach the conclusion, I think, and they reached that conclusion.  It may be that you are right that the judgment is unsatisfactory in some respects but why should we be interfering in it?

MR GARNSEY:   It is not merely that, if your Honour pleases, because his Honour did not say, “I take that paragraph 42 of Mr Ahrens and that is it”.  He did not say, “I can base decision on that”.  What his Honour did was say, “I must look at TWT Hickey”, et cetera.  What his Honour is really saying is, “I cannot just take what Mr Ahrens said, I have got to work it out” because when one looks at what took place in the trial, that was what the trial was all about.  Because of the movements in other directions in the area, because Mr Love, Mr Ahrens, Mr Brown all said, “I was concerned with doing other things”, “I did not think of this precise combination.  This was the first time this combination had been selected”.  They all said that.  So, his Honour ‑ ‑ ‑

McHUGH J:   It was a great commercial success, apparently.

MR GARNSEY:   Yes.

MR GARNSEY:   Yes.  I have given the references in those submissions in reply, if your Honour pleases.

GUMMOW J:   Yes, but if you look at page 1253 line 22, does that not really bear out what Justice McHugh was putting to you?

However the applicant’s case on inventiveness eventually resolved into a narrowly based attack on the first respondent’s evidence.

That attack was rejected.

MR GARNSEY:   I am not quite sure what his Honour is referring to there in the sense that what I have put to your Honour as to the mere collocation, the laundry list, is the attack.  What I have put to your Honour is the additional matters that there were difference in the – in whatever combination ‑ ‑ ‑

GUMMOW J:   Just a minute.  Look at page 1254 line 7, Mr Ahrens.  Then there is a summary of what his Honour took from that and then he said – you seem to have it in for Mr Ahrens because he considered himself an inventor.

MR GARNSEY:   If your Honour pleases, there are authorities to which we have referred which say one is concerned with the notional addressee, the inventor.

GUMMOW J:   I realise that.

McHUGH J:   But your criticism of lack of evidence seems to have been filled by the trial judge, on one view, putting a gloss on their evidence or interpreting their evidence in a way which is inimical to your interests.  The judge interprets their evidence.

MR GARNSEY:   Your Honour, with respect ‑ ‑ ‑

McHUGH J:   You get a clear illustration of that at line 10 on 1254.  After referring to Mr Ahrens’ evidence, he said:

I take this to mean that had he been faced with the need to open the lid for the purposes of the Hickey proposal, he would have considered the solution to the problem to be obvious by reference to previous experience in the industry.

MR GARNSEY:   His Honour’s judgment is, with the greatest respect, full of “I infer” or “I take this to mean”.  What his Honour had to go on in relation to that was first the affidavits; secondly, the cross‑examination; thirdly, the other documentary evidence about the content of the TWT Formark disclosures.  What his Honour chose to do with all those matters was to say, “On my reasoning, I speculate”, because there was simply no evidence of the differences.

GUMMOW J:   Did his Honour deal with the commercial success point?

MR GARNSEY:   Not as an issue, your Honour.  His Honour did deal with some evidence in relation to it as to what Mr Richards said.

GUMMOW J:   But did he say, “This is one thing I weigh when working out my final decision on obviousness”?

MR GARNSEY:   Your Honour, I cannot recall a statement to that effect in the judgment or in the Full Court. 

GLEESON CJ:   What was the argument that was put to him about that?

MR GARNSEY:   It was a matter that was not in dispute.  There was affidavit evidence from the Richards as to the commercial success.  I would hope it would have been in the written submissions.  I cannot answer your Honour at this point of time.  There were a large number of issues before the trial judge in the sense of eight.  So far we are up to seven, if your Honour pleases.  We are only here about one.

GUMMOW J:   But was it put to the Full Court?

MR GARNSEY:   No, your Honour.  It was not ‑ ‑ ‑

GUMMOW J:   In other words, were you complaining in the Full Court about insufficient weight?

MR GARNSEY:   No, it was in the written submissions to the Full Court, yes, your Honour.

GUMMOW J:   Did they deal with it?

MR GARNSEY:   I do not think so, your Honour.

CALLINAN J:   To a person coming to this area with very little experience in it, commercial success strikes me as a very significant factor.

MR GARNSEY:   Well, we say in this case, yes, your Honour, and there are a number of statements in the authorities to which I have referred which says it is significant.  When one looks at the other matter in relation to a combination patent, there are numerous statements that small advances over the prior art are sufficient with a scintilla invention and other statements that the more one has to put together prior art to invalidate a combination, the more suspect the process is.  Finally numerous statements as to the danger of hindsight in this area, particularly in relation to combination patents.

HAYNE J:   That identifies, does it not, one of the underlying difficulties that may have to be considered in looking at the attack you now make.  The judge was looking back.  The judge had to assess the situation then and had to do so wary of 20/20 hindsight and avoid it.  But the question for the judge was, was the combination at that time obvious?  He had before him Ahrens at least who said, yes, it was.  Now, if his Honour is right to say at 1253, line 23, that the attack on that conclusion was founded in an attack on the evidence of Ahrens, O’Dwyer, et cetera as there recorded, what is it that now is missing in the trial judge’s reasoning that should have been there and is not?

MR GARNSEY:   Positive evidence that the five differences between the TWT Hickey disclosure and the petty patent made no difference to the interrelationship or interaction of the integers in each of the TWT Hickey and the combination of the petty patent.

HAYNE J:   Why, when we start from an accepted base, do we not, that each of the integers looked at separately was known?  What was claimed to be the invention was the combination of them.  Why do we go off into comparing TWT and the petty patent?

MR GARNSEY:   Because otherwise one just has laundry lists, without any evidence as to the significance of the interaction of the different integers in each of the different combinations.  That is what Sir Keith Aickin in the passage from 3M that we have set out explains in great detail, both as a matter of principle and as a matter of practical application.  That is ‑ ‑ ‑

McHUGH J:   That is the standard of perfection and I think you are probably right, at least subject to what Mr Jackson says, that there might have been a couple of leaps along the way in this judge moving from the evidence to his conclusion, but he stated the principle.  On the special leave application, you open the case as one that you give the impression that it was a case of some fundamental importance, but the more I read this case yesterday and last night, the more it seemed to me that it is just a question about reasoning on factual matters.

MR GARNSEY:    Your Honour, it is a mixture of fact and law.  We sought special leave on the basis of the judgments.  Now, on the basis of the judgments, his Honour chose, with the greatest respect, not to just rely on that answer – and in my respectful submission, there is one high point in our learned friends’ case in relation to a combination.  His Honour chose not to rely just on that, but because there was a vast amount of evidence which went the other way and because the affidavit evidence was manifestly defective, and because when cross‑examined on it, with the greatest respect, it was not changed in relation to explaining in any way how TWT Hickey, plus or minus whatever else anyone might have had in mind, could show that the combination of the petty patent lacked inventive step because of the different features, his Honour chose to engage in that reasoning which we say is mere speculation.  But it is speculation which explains, or which results in, the Full Court saying, and the trial judge saying, “Laundry list okay.  Laundry list okay.  Some might overlap, some of the items of apparel, and that is good enough to invalidate a patent”.

GLEESON CJ:   Mr Garnsey, where do we see the evidence of commercial success?  Just give us the page reference if you would not mind.

MR GARNSEY:    Yes, your Honour.

GUMMOW J:   It is in volume 2, page 292, is it not?

MR GARNSEY:   Yes, it is Mr Rhys’ affidavit, yes, 292 to 294, volume 2.

GLEESON CJ:   Thank you.

GUMMOW J:   Mr Richards, is it not?

MR GARNSEY:    Affidavit of Mr Rhys Richards.  There were a number of Mr Richards cross‑examined, if your Honour pleases.  It was a family business.  Mr Idwall Richards was the inventor, Mr Rhys Richards was his son and there is Mr Phil Richards who is a nephew.

GUMMOW J:   Thank you.

MR GARNSEY:    Now, can I just take your Honours to, or say some things about the TWT Formark matter?

GUMMOW J:   Just before you do that, in the Full Court there was a reference to the 1990 Act and to what Justice Burchett said about it in Tidy Tea.  Do you take issue with that?

MR GARNSEY:    Yes, your Honour, I was going to come to that ‑ ‑ ‑

GUMMOW J:   All right.

MR GARNSEY:    I can do so now, if it is convenient, if your Honour pleases.

GUMMOW J:   Whenever it suits you.

MR GARNSEY:    I will just finish off on TWT Formark, if I may, and that hopefully will be the last factual matter, your Honour.

McHUGH J:   The Tidy Tea point does not seem to have much to do with this case, does it?  I mean, your criticisms are not about the application of Justice Burchett in Tidy Tea.

MR GARNSEY:    The Full Court did refer with apparent approval, but true not in point of decision, to what Justice Burchett did say in Tidy Tea, and that is consistent, we say, with the vice of Justice Burchett and the trial judge, and indeed the laundry list, because the Tidy Tea is concerned, with the greatest respect, with the judicial laundry list approach analogous to what is done in these affidavits about which we complain.  That is, his Honour would say it seems one does not have to have evidence as to what one can take into account for the purpose of section 7.

Now, your Honours, in relation to that, we have made our points in the written submissions, but can I say briefly this, that section 7, as it stood at the time of the petty patent, and as it probably still stands, still requires evidence that a reasonable notional addressee would come across the single item of prior public use or publication, even though that is not part of common general knowledge.  I should say – and we have not put this in our submissions, if your Honour pleases – section 7 has been amended by the Patents Amendment Bill 2001, which was assented to on 1 October 2001. 

Section 2 of that Act says that the relevant schedule amending section 7 comes into effect either on proclamation or a period of six months beginning after the day on which it receives the royal assent.  But then, there is a gloss on that, and I am afraid our investigations in the library up to 10.15, if your Honour pleases, had not enabled us to ascertain whether the amendments to section 7 have come into effect.  Relevantly, those amendments delete the last three lines of section 7(3), which would affect our submissions as to section 7. 

GUMMOW J:   The last three lines? 

MR GARNSEY:   Yes. 

GUMMOW J:   What – (b) information? 

MR GARNSEY:   Yes.  I can hand your Honours copies of the Bill.  I apologise, I have not a copy of the Act. 

GUMMOW J:   And is there an explanatory memorandum? 

MR GARNSEY:   There is an explanatory memorandum.  I can provide copies after lunch, if your Honour pleases, but the relevant ‑ ‑ ‑

GLEESON CJ:   Thank you. 

MR GARNSEY:   ‑ ‑ ‑ paragraph, which is on page 2, “Item 4 – Subsection 7(3)” says:

This item inserts a new subsection 7(3) to provide a more flexible test for determining whether an invention involves an inventive step.  The amendments will require a higher inventiveness threshold.  The new subsection will allow the combination of separate documents, different parts of a single document or of separate documents and any other pieces of prior art information (including acts) where such combination would have been obvious to a person skilled in the art.  In line with international standards and subsection 7(5) of the Patents Act (the equivalent provision for innovation patents), the amendments also remove the restriction that the person skilled in the art could be expected to ascertain, understand and regard the information as relevant.  The amendments also remove the restriction of a person skilled in the art being a person skilled in the art in Australia.

I apologise for not being able to inform your Honour whether that is in force right at this moment or not. 

GLEESON CJ:   I am looking at the notice of appeal to the Full Court of the Federal Court.  Does it make any reference to the matter of commercial success?  On page 1272, in paragraph (b), there is a series of reasons given as to why the finding that the claimed invention lacked an inventive step was based on an error of law or error of fact, and I cannot see any reference to commercial success there. 

MR GARNSEY:   No, I think your Honour is correct, but I can say – well, on page 1275 (viii):

The Learned Trial Judge’s finding was against the weight of the evidence and His Honour was wrong in holding that the evidence supports a lack of inventiveness ‑ ‑ ‑

GLEESON CJ:   Could I just remind you that the special leave in the present case was limited and limited to the grounds that appear on pages 1313 to 1314.  Subject to correction, that does not appear to me to cover anything in relation to commercial success.

CALLINAN J:   Do you say that Minnesota Mining requires reference to commercial success?

MR GARNSEY:   It was not concerned – yes, it referred to that, if your Honour pleases.

CALLINAN J:   It is one of the factors to which Justice Aitken referred, is it not?

MR GARNSEY:   Yes, your Honour.

GLEESON CJ:   The complaint you made, as the basis for your application for special leave to appeal, as I understand that, and as reflected in the grounds of appeal, was really largely related to the concentration that you say was erroneous placed on this lid‑opening device.  My recollection is that the principal attack that you wanted to make on the reasoning of the Full Court was that they raised what you called a “notional problem”, and then asked what was the solution to the problem, and it was a problem relating to how you get the lid over.

MR GARNSEY:   Yes, your Honour.

GLEESON CJ:   And that, you said, was inconsistent with Minnesto Mining v Beiersdorf.

MR GARNSEY:   Yes.  Your Honour, if I could say two things in response to your Honour the Chief Justice in relation to that.  First, we did make that submission as to the commercial success in the submissions to the Full Court, and that was paragraph 5.17 on page 13 of those submissions.  Secondly, your Honour, we refer to that matter in our submissions in reply as supporting the unsafe state of the evidence which, we say, fundamentally led to errors of reasoning, amounting to errors of law when one looks at how the court dealt with matters in relation to a combination, and dealt with matters without evidence.  Thirdly, if your Honour pleases, we would seek an additional grant of leave if the Court was so minded.

GUMMOW J:   You have to formulate the ground.  Someone could do that.

GLEESON CJ:   And you will not get any assistance in doing it by looking at the notice of appeal to the Full Court of the Federal Court.

MR GARNSEY:   No, your Honour.

GLEESON CJ:   You will not find a precedent for it there.

MR GARNSEY:   No, your Honour.  We would seek leave to raise the ground that the decision was against the evidence and the weight of the evidence as to commercial success and contrary industry development as to the state of the art at the relevant time.

GUMMOW J:   Would you say that again, please?

MR GARNSEY:   The decision of the Full Court was against the evidence and the weight of the evidence as to, first, commercial success of the invention of the petty patent, which was undisputed and, secondly, as to the undisputed evidence of industry development at the priority date of the patent.

GLEESON CJ:   Does that amount to saying that, having regard to the existence of that evidence, the decision of the Full Court was perverse?

MR GARNSEY:   Your Honour, having regard to that evidence and the unsafe state of the reasoning as to the matters in respect of which we sought special leave which I have sought to make good on the submissions, the decision of the Full Court should not stand.

GLEESON CJ:   We will hear what Mr Jackson has to say in due course about your application.  You go ahead with your argument.

MR GARNSEY:   If your Honour pleases.

GUMMOW J:   Whatever comes out of this very recent amendment, that does not affect us.

MR GARNSEY:   No, it does not.  I thought I should draw it to your Honours’ attention ‑ ‑ ‑

GUMMOW J:   Yes, I am grateful for that, but why do you criticise what Justice Burchett says about the section in its previous form?  Why do you take issue with Tidy Tea?  You do not have to, do you?  Can you not live with Tidy Tea, on your submissions?

MR GARNSEY:   Your Honour, we do not have to for two reasons.  One is, it is not essential to the decision of the Full Court.  Secondly, section 7, as applied by the trial judge and the Full Court, enables one to take the TWT Formark, or Hickey, disclosure as a single item of prior use or prior publication, whichever way one puts it, and to add to some, we say, undefined, we complain about that common general knowledge, so that if the Full Court is not doing directly what Justice Burchett suggested in Tidy Tea could now be done, which seems to be going back to the HPM v Gerard line of authority which were disapproved ‑ ‑ ‑

GUMMOW J:   I know, but section 7 is designed to change things.

MR GARNSEY:   Yes, your Honour.  At the time the patent stood it had the three lines at the end section 7(3) ‑ ‑ ‑

GUMMOW J:   I know, I know.

MR GARNSEY:   - - - which one would have to have evidence, with respect, on which to act.  Usually, a warm body of an expert but, perhaps, other indirect evidence.

GUMMOW J:   Evidence as to what?

MR GARNSEY:   As to whether a notional addressee in the patent area would reasonably be expected to find the prior public art or public use.  Those three lines have been ‑ ‑ ‑

GUMMOW J:   Forget about them not being there now ‑ ‑ ‑

MR GARNSEY:   If your Honour pleases.

GUMMOW J:   We are trying to solve this case.

MR GARNSEY:   Yes.  Your Honour, I do not seek to take the Tidy Tea matter any further except to say that it is in our submissions that, as the section stands in relation to this petty patent, that evidence is required and the ‑ ‑ ‑

GUMMOW J:   Evidence of what?  Reference to which passage of the section?

MR GARNSEY:   First, if one is relying upon common general knowledge, either alone or with a prior public knowledge or use, one must have evidence of common general knowledge in accordance with the discussion and principles enunciated in the 3M Case.

GUMMOW J:   Common general knowledge of what in terms of the section?  Then I will give up.

MR GARNSEY:   Your Honour, common general knowledge of, with respect, whatever is relevant to the particular area of art that is under consideration at the relevant time.  In other words, I am submitting that the position has not changed in relation to the 3M Case as to ‑ ‑ ‑

GUMMOW J:   I am trying to interest you in the proposition that it has changed, that it came out of the 1984 intellectual property report, which the government accepted, which expressly said they were going to change things.  On that hypothesis, what do you want to say about the evidence in this case and what was lacking or what was present or what was not?

MR GARNSEY:   Your Honour, the IPAC recommendation was Recommendation 13, which is found on page 5164 of volume 1 of Butterworth’s.  I apologise I do not have photocopies to hand up.

GUMMOW J:   I think we have copies.

MR GARNSEY:   The government’s response is listed in the right‑hand column as to that and the recommendation (iii):

that the common general knowledge in the art be treated as including disclosures in recorded form publicly available anywhere in the world which a skilled person working in the art at the time should reasonably have been expected to find, understand, and regard as relevant –

was not accepted by the government then.  The last three words in section 7(3) appear to have been inserted with that in mind.  We accept what falls from your Honour that as to ‑ ‑ ‑

GUMMOW J:   It may not necessarily be against you.  Counsel always think when you ask them something that you are hitting them on the head.  Sometimes you are giving them a carrot.

MR GARNSEY:   I am not seeking to say it is against me, if your Honour pleases.  Indeed, what I am saying is even though it has changed, if one looks at the facts in this case and TWT Hickey, which is a combination, it does not make any difference to the decision.

GUMMOW J:   All right.

MR GARNSEY:   In relation to TWT Hickey, can I just indicate to the Court that the factual history and the evidence in relation to it as considered by the trial judge in relation to novelty in his Honour’s judgment from pages 1235 through to 1248 with particular reference to 1247:

I infer, on the balance of probabilities, that at the presentations in July and November 1991, reference was made to the use of the butterfly plate, although it may not have been so described, and its mechanism may not have been disclosed.

That is the relevant finding as to the content, apart from the evidence, which was accepted by the trial judge, that features (f), (g) and (h) on page 1260 of the petty patent were not disclosed by the TWT Formark presentations.

HAYNE J:   Where do I find that finding?

MR GARNSEY:   It begins at page 1246 lines 20 to 22.  That is what Mr Richards asserts and his Honour then says:

The first respondent alleges full disclosure of all relevant matters at either or both of the meetings, not that all disclosures on both occasions should be combined.  It is therefore necessary to make findings –

I am sorry, yes, your Honour, 1248, lines 25 through to 32.

The evidence was from the recollection of various persons who had been at those presentations which was not precise.  There was considerable dispute as to its content.  The butterfly plate was shown in the TWT Hickey provisional specification which was lodged on the same day as the 1 July 1991 presentation but was not published until after the priority date of the petty patent.  It was published in about July 1992, I think from recollection.  Consequently, his Honour’s findings are based on contemporaneous evidence with differences in recollection or poor recollection of people who went there, plus some documents handed out, plus some subsequent documents with a little inference back.

The TWT Hickey provisional specification is found in, Mr Carrigan tells me, volume 3.  I am sorry, your Honour, there is a complete specification in volume 3 but that is not the one.  That was published long after any relevant date.  There is a provisional specification which is elsewhere in the appeal books which shows the butterfly plate.  The purpose of the butterfly plate, if your Honours please, was this, that the TWT Hickey proposal was for a system which involved trucks collecting bins and for a depot as well, as disclosed in the provisional, but so far as it was given any definition - and his Honour’s finding, to which I have referred your Honours, is not precise.  His Honour just finds that the butterfly plate was referred to in the presentations but its mechanism was not explained.

The Hickey proposal dealt with having an open‑topped bin.  The provisional specification refers to it as open‑topped.  It is later developed with the complete - which is irrelevant for present purposes - and what happened with the lifting mechanism from the truck, it got the bin, the butterfly plate was clamped on top.  It was called a butterfly plate because it folded up once the bin was right in the position where the refuse or two different sorts of recyclables would drop into the correct retainers.

GLEESON CJ:   Mr Garnsey, the key part of the reasoning of Justice Dowsett, as I understand it, on the matters that you have been arguing so far, appears on page 1256 commencing at line 24, is that correct?

MR GARNSEY:    Yes, your Honour.

GLEESON CJ:   And he deals with this “combination” question from page 1256, line 24, over to page 1257, line 25.  He is dealing with the way the case was argued before him.  What is the error in that process of reasoning?

MR GARNSEY:    Your Honour, it is the error we point to in paragraphs 24 through to 30 of our submissions, that is, developing an ex post facto notional problem.  This is allied to getting rid of the additional features for Hickey, or the missing features for Hickey, because what his Honour did, and the Full Court upheld, is to say, “The problem I identified was how to open the lid”.  That is all the invention of the petty patent was there to solve.  Now, we say, first, when you look at the invention as described and as claimed and consider it as a true combination, it is an invention for all the features co‑operating ‑ not just how you open the lid, but how the whole thing gets a bin with a closed lid with two divisions into the right position to dump the refuse and the recyclables.

GLEESON CJ:   Now, on page 1257, at lines 6 and 7, he says:

Thus the inventive step which is claimed is simply use of a lid opening device of any kind located on the loading mechanism.

Is that an accurate reflection of the way the case was argued?

MR GARNSEY:    No.  Your Honour, the case was argued on the basis that there was a true combination and the combination achieved various matters.  It was dealt with by Mr Idwall Richards in his affidavit evidence and, to some extent, in cross‑examination.  The combination he gave evidence of was a combination which had not been put together before and that is something that all the respondents’ witnesses agreed to.

GLEESON CJ:   Well, I do not want to put an argument in your mouth and it may not be one that will survive examination, but if you look at what is said on page 1257, lines 6 and 7, and relate that to what is said at line 25, the conclusion “that claim 1 demonstrates no inventive step” is reached in the light of the assumption or the hypothesis that the inventive step claimed is as referred to further up the page.

MR GARNSEY:    Yes, and, your Honour, we take issue with that and, indeed, we have developed that argument on paragraphs 24 and following of our outline of submissions.  Mr Richards, when giving evidence, in his affidavit and under cross‑examination, as to the benefits of this invention said ‑ and we do not resile from this ‑ that it was an important matter that the lid‑opening device be on the loading mechanism.  But the benefit of the claim was, if one looked at the combination, that it could fire or operate at any time during the lifting cycle, which is very important for disposing of the waste and the recyclables at the right time because if the lid opens too early, then either they do not get into the truck at all or there is what is called “cross‑contamination”, that is, they do not fall correctly at the relevant - now, that was explored, not as the inventive step, but as part of explaining how the combination operated, what was the benefit of it.

CALLINAN J:   In other words, you say you did not have to claim the timing as an inventive step? 

MR GARNSEY:   That is right, we do not. 

CALLINAN J:   Whereas his Honour says, at the page to which the Chief Justice has drawn your attention, that had it been claimed, it might have been a different case and that it was therefore something you should perhaps have claimed but did not claim.  Is that right? 

MR GARNSEY:   That is right.  With respect, your Honour, his Honour used the phrase “inventive merit” or “true nature of the invention” on a couple of occasions, and I have given the reference in the written submissions.  Experienced patent judges, with respect, since the last century, and most latterly Sir Keith Aickin and echoed subsequently in judgments of this Court, have said ex post facto hindsight and analysis is very dangerous.  It is ‑ ‑ ‑

GUMMOW J:   But your point is it is the wrong hindsight. 

MR GARNSEY:   Yes, but ‑ ‑ ‑

GUMMOW J:   It is hindsight looking at the wrong object.  And it is dealing with a straw man. 

MR GARNSEY:   Yes, indeed.  Essentially, that is our complaint, your Honour.  In Ramset, this Court said at page 187, down the bottom:

The expressions “inventive merit” and “appreciable merit” appear to have come into use during the development in the last century of modern patent law.  The notion of “merit” was used by the courts and by commentators, including Fletcher Moulton, to express what under the Act is conveyed by the principles concerning novelty and, more frequently, inventive step.  By the beginning of this century, it had no distinct and independent doctrinal meaning:  it was used sometimes in reference to subject matter, sometimes in reference to novelty.  The phrase invites error through imprecision of legal analysis. 

CALLINAN J:   Mr Garnsey, can I just understand it factually for a moment, please.  Is your case that this device, the opening device, was versatile in the sense that it could operate at the appropriate time?  Let me put it that way.  Your claim is in respect of the device, not the fact that it might be able to be timed to operate to best advantage. 

MR GARNSEY:   Your Honour, our claim is in respect of the combination.  This ‑ ‑ ‑

CALLINAN J:   All right, of which one aspect is the versatile device. 

MR GARNSEY:   Yes, your Honour, but it is one aspect.  That shows one benefit of the combination.  That is, the invention has a lifting mechanism, with the lid-opening device, which can operate at any time during the lifting cycle. 

CALLINAN J:   I am focusing on that because his Honour seems to have said at page 1257 that, had you made a claim about timing, you might have won the case.  Is that the right way to read it? 

MR GARNSEY:   With respect, yes.  Well, I do not know about, “we might have won the case”.  It has been a bit of a battle, your Honour. 

CALLINAN J:   Well, it would have been a different case, anyway, and you would have had a better chance.

MR GARNSEY:   Yes, it would have, indeed, your Honour.  But, with respect, that is a matter of which we complain, because we say it is another indication, with the greatest respect, of speculation.  One follows one’s nose as to what one thinks is the inventive ‑ ‑ ‑

HAYNE J:   Is that right, in light of what is said at 1256 line 24 and following?  These passages of evidence are introduced by first a statement of what is said to be the other basis for resisting the allegation.  I take that to mean a basis put forward by your side of the case, that his Honour is there recording an argument which you advanced.  Is that what his Honour is there doing?

MR GARNSEY:   Not in the terms that his Honour does it.  We advance the argument, your Honour, that we have a combination.  We have a number of benefits because of the interaction of the integers.

HAYNE J:   Yes.  Because his Honour then describes the argument, as I would understand him, as being Hickey’s proposal had the butterfly plate.  His proposal – Hickey’s proposal contained all of the elements of:

claim 1, other than the location of a lid‑opening device on the loading mechanism and its operation.  The applicant claims to have identified the need to open the lid –

et cetera.  Again, his Honour appears there to be recording an argument advanced.  Is he?

MR GARNSEY:   It was an argument advanced by my learned friends, with respect.  TWT Hickey did not deal with a lid‑opening device at all, at any time.

HAYNE J:   No, no.  The sentence:

The applicant claims to have identified the need to open –

Is his Honour there recording an argument you advanced at trial?

MR GARNSEY:  Your Honour, as I understood Mr Richards’ evidence, it was not identifying the need to open the lid.  It was the benefit of having a lid‑opening device on the lifting mechanism which could operate to open the lid at any time during the lifting cycle.

GUMMOW J:   Anyhow, I am not sure – how did that evidence get in?  What an inventor now says he was doing may be quite different to what he has actually claimed in his patent.

MR GARNSEY:   Your Honour, we complained – we developed this in our written submissions with respect ‑ ‑ ‑

GUMMOW J:   I mean, the scope for self-help for inventors is enormous once that sort of evidence gets in.

MR GARNSEY:  Indeed, your Honour, it is free judicial advice but, with respect, in an area in which one is not an expert.

GUMMOW J:   It is not what he intended to claim.  This is the modern nonsense of interpretation.  It is what is in fact claimed and put out as this public document.

MR GARNSEY:   Indeed.  Yes, your Honour, we say ‑ ‑ ‑

GUMMOW J:   Other people are not privy to what was going on in the inventor’s head ‑ ‑ ‑

MR GARNSEY:  No, your Honour.  We say it is ‑ ‑ ‑

GUMMOW J:   ‑ ‑ ‑ if anything.  He might just have dreamt it.

MR GARNSEY:  Your Honour, we say it is crystal clear what in fact was claimed, and it was not what the trial judge said, as an invention or otherwise, and it was not what the Full Court upheld.  Your Honour, I hope Mr Carrigan has found the provisional specification of – your Honour, it is in volume 2 at page 274, the last sentence.  Can I take your Honours to that, because this, in our respectful submission, illustrates how, with respect, wide his Honour threw the net and the Full Court also threw the net. 

The purpose about this provisional specification is that it was filed on 1 July 1991, the same day as the first TWT Hickey presentation, but it was not published until months after the priority date of the petty patent, 10 February 1992.  At that stage, the provisional did not deal in any way with any lid‑opening device and as one can see from 275, line 30 ‑ ‑ ‑

GUMMOW J:   Why are we looking at this?

MR GARNSEY:   We are looking at it for this reason, if your Honour pleases ‑ ‑ ‑

GUMMOW J:   How did it get in?  What is it evidence of?

MR GARNSEY:   There was a question about the priority date and fair basis, if your Honour pleases.

GUMMOW J:   Exactly, I understand that.  How is it now relevant to what we are talking about?

MR GARNSEY:   It is only relevant to understanding his Honour’s findings ‑ ‑ ‑

GUMMOW J:   I see.

MR GARNSEY:   Because his Honour found, and I have taken your Honour to the passage, that there was some reference to the butterfly plate but the mechanism was not explained.  There was a dispute on the evidence as to whether there was any disclosure of any question of opening the lid.  His Honour found, on the evidence, that was not part of the disclosure but there was a recognised need to open the lid.  We say, with the greatest respect, “So what?”.

GUMMOW J:   That would go to a utility case?

MR GARNSEY:   Yes, but at any rate, if one wants to see how Hickey was conceived in relation to the evidence at 1 July 1991, with respect, volume 2, page 274 is the place.  Your Honours, we have set out in much greater detail in our submissions and in the submissions in reply, our principle points in the various matters.  We have made a protective submission, with the greatest respect, as to remitter, and I do not seek to say anything more about that, we just do not wish to be back in the Full Court and being suggested we thought we should be on this matter. 

Your Honours, in relation to the schedule I handed to your Honour of the affidavits and the cross‑examination, the high point is that one answer that his Honour the Chief Justice, to Mr Ahrens and our friend’s refer to in their submissions, the affidavits are otherwise relevantly common form.  When one looks at the cross‑examinations of Mr O’Dwyer and Mr Brown, and for that matter Mr Ahrens, one looks in vain for any recognition of what a true combination is, or assessment, in that respect.

GLEESON CJ:   Mr Garnsey, you may be the victim of a misunderstanding, both at first instance and in the Full Court, but can I ask you whether or not the statement on page 1298 at line 40 is an accurate statement of fact as to what you argued in the Full Court?

MR GARNSEY:   I am sorry, did your Honour say 1248?

GLEESON CJ:   No, 1298, line 40.

MR GARNSEY:   I am sorry, your Honour.

GLEESON CJ:   That, I take it, to be a statement about what you said?

MR GARNSEY:   No, your Honour, not in those terms.

GLEESON CJ:   You seem to have been misunderstood on both occasions.

MR GARNSEY:   Yes.  We did say there was a combination and one of the benefits of it was the fact you had the lid‑operating device on the loading mechanism which you could operate at any time.  I do not wish to resile from that, but that was one aspect we pointed to of the benefits of the combination.  It was not conceded that that was the inventive step , and

indeed Mr Richards’ evidence – he was the inventor – gives a history of his invention which was designed to deal with a number of actual problems.

GUMMOW J:   Do we not find that out from the text of the patent what the problem was that was sought to be overcome?  Is that not the orthodox way of doing these things?

MR GARNSEY:   Yes, your Honour, at page 1175, “BACKGROUND ART”, it is a more general problem.  Unless there are any other matters I can assist your Honours with, they are our submissions.

GLEESON CJ:   Thank you, Mr Garnsey.  Yes, Mr Jackson.

MR JACKSON:   Your Honours, may I deal with a couple of matters before going to the substance of our submissions?  The first is that your Honour the Chief Justice referred to the extent to which there was reference to the “lid opening device” and the evidence of it.  The primary judge, himself, adverted to that in two passages in his reasons.  In volume 6 at page 1215, first of all.  Your Honours will see that commencing about line 5, the sentence:

The lid opening device –

and your Honours will see that he uses the expression:

this may have been partially attributable to the need to distinguish between –

Your Honours, that takes one to the nature of the case that in effect was being made so far as the other side’s case was concerned that this was something that did involve an inventive step and this was something that was relied upon, as both primary judge and the Full Court said, as one of the things that distinguished this from the state of existing knowledge.  The other passage is at page 1248 in the first paragraph on the page and your Honours will see that the judge in the first few lines said:

that the case has focussed on that issue in a way which has over‑emphasised . . . It seems to me that the true merit of the invention and of the Hickey proposal is the concept of separate handling of pre‑sorted waste.

Which, in a sense, is a reference back to parts of the patent to which reference was made by my learned friend a few moments ago.  Now, your Honours, could I also say that in relation to the – the evidence had to be from the present appellant’s side left in a somewhat unsatisfactory position because the principal witness, Mr Richards, his evidence was not accepted, at least very fully, by the primary judge.  Your Honours will see that referred to at page 1247 in the paragraph commencing about line 17 where he said he “formed a generally unfavourable view of” him.  Your Honours will see that developed through the remainder of that paragraph.  I will take your Honours to Mr Spratt’s evidence in just a few moments.

Could I also refer to page 1253, about line 20 on the page, where your Honours will see that the way in which the judge described what happened was that – and this is in the light, of course, of the judge’s view about Mr Richards’ evidence and then the judge goes on to say that the:

case on inventiveness eventually resolved into a narrowly based attack –

on the evidence that we had called, and one sees, then, him going in due course to the two points that were advances.

In our submission, this is a case – and I will take your Honours to the detail of it in just a moment – where ultimately the question turned on one of fact and there was evidence which supported the conclusion arrived at by the primary judge.  Could I start by going for just a moment to the provisions of the Act itself and if I could take your Honours to section 18 of the Act, the critical question, to use the words of section 18(1)(b), was whether the invention, so far as claimed in any claim, involved an inventive step by comparison with the prior art base.  Your Honours, that compound phrase is really picked up by section 7(2) which gives rise to a presumption in favour of the existence of an inventive step but that presumption is one which is rebuttable and is rebutted if:

the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim . . . in subsection (3) –

not relevant for present purposes, in our submission.  It then goes on to expand that.  But, your Honours, one sees then that one is speaking of the claims in the patent because of the terms of section 18(1) and your Honours will see the claims in various places.  One reference where your Honours will see them is page 84 in volume 1, where they are simply set out.

GLEESON CJ:   Was the reason for the concentration on the lid-opening device that the prior art base made known everything about this invention, except the lid-opening device?

MR JACKSON:   Yes, your Honour, essentially that.  Nothing was said particularly about the lid-opening device and essentially, your Honours, the ‑ ‑ ‑

GLEESON CJ:   What I was going to ask you was:  what about the combination of the other integers, apart from the lid-opening device?

MR JACKSON:   Could I just say two things about that.  The first is that what was made known before that and as part of the common general knowledge was a particular combination.  That combination did not specify what the method of opening the lid was, although somehow the lid has to be opened.  But, your Honour, what ‑ ‑ ‑

GLEESON CJ:   When you say the lid has to be opened, the lids of these things flap open when you turn them upside down.

MR JACKSON:   Yes, of course.  But what I am seeking to say about it, your Honour, is we do not say for a moment that the question is:  is this combination the same as the prior combination?  What one has to look at is this combination ‑ ‑ ‑

GUMMOW J:   You lost on novelty, for that reason.

MR JACKSON:   Yes, we lost on novelty, but the question was whether – and I will take your Honours to the passages where the judges appreciated this was the question – the question was whether this combination was one that was, in the defined way, obvious.  Now, your Honours, in deciding that question, what could be taken into account was what disclosures there had been in the past, disclosures, using that to describe what was part of the common general knowledge.

Now, your Honours, that is where our learned friend’s argument, if I may say so with respect, is one that selects the combination beforehand and says, “The laundry list or shopping list, whatever it is, you add a bit on here and then you add a few carrots here and take off the sausages”, I suppose, and see if you have the same thing, the same basket for the ultimate purpose.  But it is not that, your Honours, with respect.  The question is:  was the combination that is the subject of the patent a combination which was, in terms of the statute, obvious?  One could take into account what there was before, but it is not a comparison question in that sense, your Honours.

Your Honours, could I say, by way of introduction, that this is a case where we would submit that, contrary to our learned friend’s submissions, the primary judge identified and applied the correct test and there was evidence, which obviously enough he accepted, which justified the conclusion to which he arrived, and we would come, in the end, your Honours, to submit that, in the end, this is no more than a pure fact case on somewhat unusual facts.

Your Honours, could I go to the trial judge’s approach?  It is clear, of course – and one only has to look at the description of the claims – to see that this is a combination case.  The first few words describe it as a “combination” and, your Honours, that means that the correct approach is that which is adverted to by Justice Aickin in the 3M Case 144 CLR 253 at 293. Could I take your Honours to the central passages of that. Your Honours will see, if I could go to about a third of the way down the page, his Honour says, “The question is, is the invention itself obvious”. That is the test, “is the invention itself obvious”, and in the context in which he is speaking, he uses the comparison of saying it is not whether you can find all the bits somewhere else, but “is the invention itself obvious”. He goes on to say, your Honours, that - he speaks about it, in a sense, epexegetically, about that, in the last nine lines of that paragraph, but he goes on to the conclusion at the end of the paragraph that:

It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious.

Now, your Honours, if one goes then from that to the primary judge’s reasons, it is clear, in our submission, that he recognised that as being the test.  Could I take your Honours to volume 6 at page 1249?  Now, your Honours will see at page 1249 that his Honour sets out the passage, at the bottom of the page, by Justice Aickin, and your Honours will see the last few lines on page 1249 set out the question and then, if one goes to the end of that passage at page 1250, your Honours will see that he quotes, for example, the last sentence of that passage.

Your Honours, one then sees that - may I say, we would ask the Court to note, in passing, that he had earlier referred to a considerable amount of potentially relevant evidence when he was dealing with the question of novelty.  I will not take your Honours to it.  It is at pages 1235 and following.  He deals with the novelty immediately before this.

Then, your Honours, at page 1249, lines – if I just could go back a page for a moment – page 1249, at lines 4 to 14, your Honours will see that he discusses the ambit of the public knowledge that was available at the time and he then goes to the test.  If one goes then to page 1250, your Honours will see that when the judge himself comes to state the test ‑ and this is about line 18 or 19 – he says: 

It is not disputed that each of the integers of the petty patent claims was known in the patent area before the priority date.  The issue of absence of an inventive step requires an examination of the obviousness or otherwise of the combination. 

So the judge is stating, in our submission, the correct test.  If one goes then to the evidence, one sees that, at page 1250, commencing at about line 19 and following, he goes on to discuss – in a way in which, with respect, it would be difficult to describe as unorthodox – the evidence adduced by the appellant on the state of the industry. 

I say, it would be difficult to describe that as unorthodox because one is talking about a situation of what was the common general knowledge in terms of section 7(2).  He goes on to discuss that at some length.  Then, if one goes to the actual evidence, which he proceeds to discuss, we would submit that the conclusions at which he arrived were perfectly open to him.  The evidence came from a number of witnesses:  Mr Ahrens, Mr O’Dwyer ‑ there was also Mr Spratt and Mr Love.  Could I go very briefly to the core parts of their evidence?  It seems clear enough, if one looks at pages 1252 and 1254 that your Honours have been taken to already, that he accepted the evidence of Mr Ahrens. 

If I could go then to Mr Ahrens’s evidence in volume 4, your Honours have seen, at page 881, in the passage between lines 5 and 10, he was asked whether, “the combination in the petty patent wasn’t obvious in 1991/1992?”  He said, “Yes, they were obvious.”  “That is your statement and your sticking to it?  Yes.”  Now, that appears in the light of what one sees in the preceding passages, commencing at about page 879, about line 10, going through to the next page and, in particular, if I could go particularly to the middle of the page, about line 14: 

where you go on to say that the invention as claimed in claim one is a list of obvious features, is that your view about what Mr Hickey did behind your statements there, too? 

He said: 

Well, what he had come up with, and then when you look to make the actual concept work, everything to make it work were very obvious. 

Your Honours will then see at the bottom of the same page, he speaks of it being the knowledge he had in 1991, and then one comes, your Honours, whatever might have been perhaps the deficiencies of paragraph 42 of the affidavit - maybe it did not go far enough, maybe it did - but when one comes to page 881 he is asked the question and answered it.  If one goes then to the remainder of his evidence, which only goes over for a page or two, there is no reason at all, in our submission, why the judge could not say, “I accept that evidence”.

Your Honours, it could not, with respect, be clearer evidence that the combination the subject of the claims was obvious.  Now, your Honours, that is attacked by our learned friends in their reply submissions at paragraph 4(a).  May I say a couple of things about it.

GLEESON CJ:   Can I just ask you a question of fact before you go on to that, Mr Jackson.  What is the relationship between the appellant and J.J. Richards & Sons?

MR JACKSON:   Your Honour, J.J. Richards & Sons, I think, is the company presently conducted by Mr Richards.  I express a degree of hesitation because there was a division of the companies into two, and I am just not sure which one J.J. Richards is.  I think Firebelt, the appellant, holds the intellectual property; J.J. Richards conducts the business.

GLEESON CJ:   I see.  What prompted my question was what appears on pages 1252 and 1253 about the prior art; in particular page 1253 line 16.

MR JACKSON:   Yes.

GLEESON CJ:   For practical purposes that is the appellant.

MR JACKSON:   Yes, your Honour.  My learned friend is indicating that he does not agree with that, but there was a family company consisting fundamentally, your Honours, of two brothers.  In due course, as tends to happen, they broke up into two separate groups, but Firebelt is a company that holds the intellectual property.  I think they have a half‑interest each.

GLEESON CJ:   Thank you.

MR JACKSON:   It is discussed in an affidavit.  I will give your Honour a reference a little later.  Your Honours, my learned friends in their reply submissions in paragraph 4(a) make a number of attacks on Mr Ahrens’ evidence.

Could I say a number of things in relation to it.  The first thing, your Honours, is this:  the evidence which the judge was entitled to accept was evidence given by Mr Ahrens that he was not speaking in terms of a hindsight.  Your Honours will see that at page 880 in volume 4, at line 27. He says it is the view he held in 1991/92.

CALLINAN J:   Is Mr Ahrens giving that view as an expert?

MR JACKSON:   Your Honour, he is giving the view of the type of expert that is appropriate in a case such as this.

CALLINAN J:   That is my problem, Mr Jackson.  Section 80 of the Evidence Act says, in effect, that evidence is not inadmissible because it may go to a fact in issue, is that correct?

MR JACKSON:   Is admissible?

CALLINAN J:   Opinion evidence?

MR JACKSON:   Yes, your Honour.

CALLINAN J:   It is not inadmissible on that ground only, so in order to qualify for admissibility, if it is an opinion as to a fact in issue, it needs to be given by an expert, is that right?

MR JACKSON:   Or a person having specialist knowledge, yes, your Honour.

CALLINAN J:   All right, let us say “expert”.  Is this an issue for an expert or is it an issue for an ordinarily skilled person who is not an expert, or indeed, is it an issue on which evidence can or should be given at all?

MR JACKSON:   In our submission, yes, your Honour.  It is a “yes, yes”, if I could put it that way.

CALLINAN J:   Why is that then?

MR JACKSON:   Your Honour, it is so because one goes back to the question that is being asked.

CALLINAN J:   The complete answer may be, Mr Jackson, that nobody objected to it anyway.  Is that so?

MR JACKSON:   Your Honour, an even better answer, with respect, is that my learned friend asked the question.

CALLINAN J:   Yes, that probably is the complete answer, although I saw the way in which Justice Dowsett set out to deal with objections to evidence at page 224 and I must say it leaves me in a state of uncertainty, about which I have complained in other cases, as to precisely what was in evidence or what was objectionable and what was not.  Judges should deal with objections to evidence as tedious as it might, on occasions, be.

MR JACKSON:   Well, your Honour, I do not want to get involved in a general discussion about the need for appropriateness in dealing with a particular case ‑ ‑ ‑

CALLINAN J:   No.  But in any event, you say there is no objection to it and it was tendered, in effect, as a result of the questions by the appellant?

MR JACKSON:   Indeed, your Honour, that is the strongest part of it, but the test which has some necessarily hypothetical aspects to what would have been obvious to a person skilled in the relevant art in the light of the common general knowledge at the time, that is something in relation to which one really has to be looking at someone who has some knowledge of that topic.  Now, of course, not all the aspects of that necessarily have to come from an expert.  Common general knowledge is something that could be described by persons who have not expert knowledge.  Now, your Honour, one could say if one is not careful with a hammer, one is likely to hit one’s thumb, but ‑ ‑ ‑

CALLINAN J:   I think I have distracted you, Mr Jackson.  I think it is a complete answer that the question was asked by the appellant.

MR JACKSON:   Thank you, your Honour.  The second thing arising from paragraph 4(a) of our learned friend’s submission in reply is this, that the references in the decisions to ex post facto matters are references to a rather different question and that is the addition together of various integers, as distinct from asking the large question.  I will not go back to the 3M Case, but could I refer your Honours to page 293 in that regard.

The third thing, your Honours, is that in paragraph 4(a) there is a reference to the evidence of Mr Ahrens being, in a sense, hypothetical.  However, the terms of section 7(2) require the tests be that of a hypothetical person possessing statutorily prescribed attributes and a level of knowledge.

McHUGH J:   That is one of the problems I have about acting on Mr Ahrens’ evidence because he never expressed his views about obviousness in terms of the statute and, worse still, he regarded himself as an inventor.  So he himself was the opposite of the statutory hypothetical skilled worker.

MR JACKSON:   Well, the uninventive notional addressee, your Honour.

McHUGH J:   Yes.

MR JACKSON:   But, your Honour, could I just say the description of him as an inventor comes really from, I think, one question and one answer that appears shortly after the passage to which I referred.  That comes, your Honours, at page ‑ ‑ ‑

GUMMOW J:   It does not say inventor of what.

McHUGH J:   Page 882.

MR JACKSON:   Yes, your Honour.

McHUGH J:   He was working on trucks himself, was he not?

MR JACKSON:   Yes.  He said:

And do you regard yourself as an inventor in this area?‑‑‑Yes, I do regard myself.

May I say two things.  The first is that this is something where the judge had the advantage of seeing him give evidence, seeing him and hearing what he was saying and understanding the evidence he was given and what he was talking about.  The first thing I would seek to say, your Honours, is that you will see at page 1254 that the judge deals with this aspect and in dealing with it he has obviously made some assessment of him from seeing him giving evidence.  The second thing, your Honours, is that to be an inventor does not put a black spot of disqualification upon someone from giving the evidence.

McHUGH J:   Not at all.

MR JACKSON:   No.  It is a question of weight.

McHUGH J:   One can be a highly qualified person, maybe a professor, who would give expert evidence as to what a non‑inventive skilled worker would regard as obvious or not, but what troubles me about his evidence is if you look at 881 about line 18, he said:

I’d built a truck with all different compartments for different coloured glasses and plastic and paper, and it was sorted on the side of the road.  That was a very inefficient system but that’s basically where it started and then – and it all –

So, he really regarded himself as an inventor, I think.  He was in there trying to solve these problems.

MR JACKSON:   Well, inventor/manufacturer, your Honour, inventor – maker of things and, your Honour, so maybe he did regard himself as that but the judge was perfectly entitled to take the view, in our submission, that his evidence on this question was evidence that he could accept.  Your Honours, could I say that it was not the only evidence - I am sorry, your Honours, may I start again?  The cross‑examination did not go further than the bit that appears at page 882 line 15 to 20.

GLEESON CJ:   Mr Jackson, just to relate this to the facts of the case, what was the difference between the TWT Formark system and this system?

MR JACKSON:   Well, your Honour, according to the judge’s findings – and I am sorry, your Honour, to be hesitant in answering this first of all, but might I preface it by saying this.  One is speaking, of course, about the claims in relation to the particular case.  In fact, in relation to the claims one sees that some aspects of it were not specified in any detail, and I am not saying that in any adversely critical way.

One sees, however, as the judge observed, that it applied to any form of lid‑opening device, so that it was a claim, it was widely expressed and, your Honour, one should not really have the view that it was describing a truck, for example, that was in (b) – because it was not until later in 1992 that any work started on actually trying to produce something that replicated what was in the patent.  So one is speaking about the terms of the claims.

Now, your Honours, if one comes to the differences between that and the TWT description, one sees that described by the judge in the sense that I suppose the extra thing that the TWT had was a butterfly plate which stopped the garbage and recyclable material from falling out and mixing until a certain point came.  So that was one thing.  On the other hand, there was nothing specified in relation to that, nothing particularly identified about how one would open the actual garbage bin lid, although it no doubt had to be opened.  So that is what it was, in a sense, your Honour.  When one goes to the claim in the particular case, one ‑ ‑ ‑

McHUGH J:   It was a little bit more than that, was it not?  Because you had a combination of 13 integers and in respect of 10 of them they were disclosed in one form or other.  This invention required a loading mechanism with a lid‑opening device and the loading mechanism had to be so constructed to grab the bin – a bin of a type having a pivot lid - and that had to be done by remote control from the cabin and it also had to raise the lid.  Now, at 598 of the book there is a drawing in relation to Mr Hickey’s proposal which shows that the bin lid opened before it is even uplifted.  So the loading mechanism was important in terms of the way you opened the lid.

The other thing that troubles me - you might think about this over lunch - what has been done here, it is said, “Well there is 13 integers here, 10 of them are known.  Now we are looking, in effect, at three of them and say whether it would have been obvious to use those three”.  I am not sure that is not an invitation to error.  What you should be really saying is, “Well, taking these whole 13 matters, would it have occurred to somebody to have arrived at this result?”  Maybe it was the way the case was conducted.

MR JACKSON:   Well, your Honour ‑ ‑ ‑

McHUGH J:   Maybe it was the way the case was conducted.

MR JACKSON:   Your Honour, may I say just these two things.  The first is that we will seek to demonstrate that what the judge did was to look at the combination but he also dealt with the submissions that were made.  Your Honour will see in the submissions made that he says, “This is what the applicant says”; so too does the Full Court.  One cannot really say the judge is acting erroneously by dealing with, and rejecting, arguments that were put to him.

GUMMOW J:   Is there a transcript of the argument?

MR JACKSON:   Your Honour, there is not one here I do not think but I will see what can be done in relation that, but I cannot give your Honour an answer now.

GLEESON CJ:   We will adjourn now, Mr Jackson, and we will resume at 2.00 pm.

AT 12.46 PM LUNCHEON ADJOURNMENT

UPON RESUMING AT 2.01 PM:

GLEESON CJ:   Mr Jackson and Mr Garnsey, it may be of some assistance if after we adjourn today the parties could over the next few days provide us with copies of the written submissions at first instance and in the Full Court of the Federal Court.

MR GARNSEY:   Yes, your Honour.  We have copies of ours in the Full Court, but I do not have ‑ ‑ ‑

GLEESON CJ:   Yes, put them all in together, if you would not mind, next week some time.

MR GARNSEY:   Yes, your Honour.

GLEESON CJ:   Yes, Mr Jackson.

MR JACKSON:   Thank you, your Honours.  Your Honours, may I move to the evidence of Mr O’Dwyer.  Could I say his evidence was found both in his oral evidence and in three affidavits.  May I indicate where the affidavits are and I want only to go to a short passage.  The first two are in volume 2 at pages 320 and 358 and the third is in volume 3 at page 609.  Could I go, your Honours, to volume 2 at page 322 and at paragraph 17.  Now, in paragraph 17 at the bottom of page 322, he speaks of the situation in 1991 where:

of the problem in relation to split bin systems, particularly where the bin was divided with an east west configuration.

Your Honours will see that goes over to the top of the next page.  Then in paragraph 31 at page 326 he elaborates upon that and one might have thought, with respect, that something like that really could not have been more obvious, even to the untutored lawyer, really, that he had to get rid of those things.

Your Honours, it would also, in our submission, be obvious enough that the bin lids would probably closed to start with.  Could I refer your Honours in that regard to what was said by the primary judge in volume 6, at page 1248, in the paragraph commencing in line 16, and it goes through the remainder of that paragraph.  Now, the last two aspects of the affidavits by him to which I wish to go ‑ ‑ ‑

HAYNE J:   Just before you depart from that paragraph, why is it obvious, in dealing with two kinds of recyclables, as distinct from a recyclable and putrescible waste, that you would need a lid? 

MR JACKSON:   Your Honour, for a number of reasons.  If one took, for example, glass, then the possibility of there being broken ‑ ‑ ‑

HAYNE J:   I just have in mind what happens in East Melbourne, Mr Jackson. 

MR JACKSON:   Your Honour, the temptation is great, but perhaps I could just simply say that for some, it would be obvious – for some types of waste, for some not.  It depends on the things that are thought worthwhile to collect, perhaps.  What the judge was speaking of, of course, was in a context where one was dealing with the two separate things:  one putrescible, the other not. 

Your Honours, what I was going to say was this:  if I could just go back for a moment to volume 2 at page 328 and to paragraph 39, your Honours will see in paragraph 39 that he says that:

Prior to 10 February 1992 each of the features was known to me in that -

and your Honours will see that in (b), he says:

each of the features was a concept which I would resort to in the planning and construction of a waste disposal body for a truck -

et cetera -

having regard to the purpose for which the truck was being constructed.

The “features” to which he refers are those set out in paragraph 32 which are a few pages before at page 326,which are the integers of claim 1 in the patent.  Your Honours will see he refers to the fact that he would resort to each of them.

Now, your Honours, could I go then to this third affidavit, which is to be found in volume 3 at page 635, and I want to refer, in particular, your Honours, to paragraph 44 at the top of the page.  Paragraph 44 comes after a discussion of the progression of ideas in the industry and your Honours will see, in particular, paragraph 38, for example, at page 633 and then paragraph 43 at the bottom of page 634, where he speaks of the progression of the - and then, your Honours, when one comes to paragraph 44, your Honours will see in the first few lines of it that he says:

By 10 February 1992 I and many others in the waste collection recycling industry had the knowledge of the integers of the petty patent and their interrelationship -

and your Honours, if I could just pause there.  He is not just speaking of the integers being listed one by one, but speaking also of the interrelationship, and then he goes on to say, in the remainder of that paragraph:

and could build and develop the concepts necessary for the ongoing developments -

et cetera.

GUMMOW J:   I do not think paragraph 44 has much weight.

MR JACKSON:   No, your Honour.  I am not suggesting that this is a decisive matter.  What I am seeking to say is – and I will take your Honours to a few other passages in the evidence in just a moment – that there was a variety – there was a number of pieces of evidence which the judge, when put together, could rely on to arrive at the conclusion which he did.  Now, could I go then to the evidence not just of the two witnesses to whom I have referred but also to that of Mr Spratt who gave evidence which was plainly germane to the section 7(2) issue.

He had been for 20 years an officer of the Ashfield Council in Sydney and he had worked for 30 years in the general area of waste collection.  Your Honours will see that referred to by the primary judge in volume 6 at page 1242, about line 27 going through to 1243, about line 11.  Your Honours will see his history referred to.  He gave evidence both by affidavit and orally.  It is clear that his evidence was evidence which the judge regarded as evidence which was acceptable.  You will see that particularly referred to at page 1247, line 21.

Could I go, your Honours, first to his affidavit in volume 3, commencing at page 507, because there are some paragraphs of it that he specifically adverted to in his oral evidence.  Your Honours will see the affidavit commences at page 507 and I wanted to refer your Honours to the paragraphs which are paragraphs 5, 6 and 7.  They commence at page 508.

McHUGH J:   What about that material about wind speed?  Is that in by accident, is it?  It precedes 507, 506, mean annual prevailing wind directions and ‑ ‑ ‑

MR JACKSON:   Your Honour, it is, I think, part of the tender documents for Brisbane City Council waste collection.

McHUGH J:   I see.

MR JACKSON:   That is why your Honour will find that material.  Your Honours, I was going to say if one goes to paragraphs 5, 6 and 7, commencing at page 508, the first couple of lines of paragraph 5 have not reproduced very well but they seem to read:

The SORT system was a single operator system involving a horizontally split bin truck with a side loading hydraulic mechanism for the “auto pick” ‑ ‑ ‑

GUMMOW J:   Who is this deponent?  This is Mr ‑ ‑ ‑

MR JACKSON:   Spratt.

GUMMOW J:   He is not an expert.

MR JACKSON:   Your Honour will see from paragraph 3, he had been from 1962 to mid‑1992 “involved in the running and operation of available refuse collection systems”.

GUMMOW J:   He is a consumer.

MR JACKSON:   Your Honour, he was a little bit more than that, with respect, because you will see in paragraph 4 that he “presided over a gathering of persons”, et cetera.  He was the person who held an office, which I will take your Honours to, in relation to the area of waste collection.  Your Honour, he may have been a consumer but sometimes one has consumers who know what they are consuming and know how it is used and sometimes you will see that they are the persons who put out ‑ ‑ ‑

GUMMOW J:   Anyhow, the judge did not rely on him, did he, on these questions of obviousness?

MR JACKSON:   Your Honour, he did not refer specifically to him in relation to obviousness, but the point I am seeking to say is there was some overlap between novelty and obviousness.  He obviously accepted his evidence and the point I am seeking to make is that the conclusion of obviousness was one in relation to which Mr Spratt’s evidence supported it and it was no doubt something the judge had in mind in arriving at that conclusion.

Your Honours will see paragraphs 5, 6 and 7 and they deal with the concept.  Your Honours will then see that the oral evidence which he gave, in our submission, plainly supported the view that – and this is why I am putting it – the common general knowledge at the time was such that the invention described was something which was obvious.  That oral evidence commences relevantly in volume 5 at page 1074 at about line 31 and your Honours will see that he said:

They didn’t explain it to me in the minutest of detail but the – the theory behind it all was available in 1991, yes.

He is speaking about the system he had described.  If one goes then to page 1076, about line 18, the judge, speaking to my learned friend, said:

You asked about the source of his knowledge of paragraphs 5, 6 and 7 –

Your Honours will see that is a question referred to further up the page.  Then at the bottom of the page he was asked:

As at November 1991, based upon which you had learnt at the –

two –

presentations, what was your understanding as to the sort system?

Your Honours will see that he said he made himself aware of the processes which he was supposed to chair and made it his business to become aware of the basics of the particular system.  Then if one goes further down the page to about line 20:

If you could go to paragraphs 5, 6 and 7 and could you please tell the Court if any of the matters in there were not revealed . . . in July 1991 –

and your Honours will see he gives his answer to that.  Then at the top of the next page, about line 10:

I recall it as being a part of the system at that particular time. 

He was speaking about the retractor or retention plate.  One comes, at the end, to the bottom of page 1079, when he is asked: 

if you could continue going through paragraphs 5, 6 and 7 and let me know whether anything in those paragraphs were not matters discussed publicly at the July 1991 meeting? 

He said: 

In relation to the retractor plate or retention plate it was necessary for the bin lid to be open for that retractor plate to be positioned during the lifting motion of the bin. 

If one goes down that page to about line 18, he said: 

All of those matters involved in paragraphs 5, 6 and 7, to the best of my recollection, were part of the discussion at that meeting in July ’91.  

Your Honours, that is material which supported the view that the combination would have been in terms of the available knowledge, obvious at the relevant time.  The primary judge has extracted in relation to Mr Love much of his evidence in volume 6, page 1237, line 24, going through to 1242, line 26.  I will not go through it.  Could we give your Honours three further references.  In volume 4, page 935, about line 10; page 937, about line 10; and page 938, line 19 through to page 939, line 8. 

GUMMOW J:   Have you a reference to 1083, line 6? 

MR JACKSON:   Your Honour, in relation to Mr Spratt? 

GUMMOW J:   Yes. 

MR JACKSON:   I have not given a reference to the top of the page.  I think your Honour is speaking about – that seems to relate to the ‑ ‑ ‑

GUMMOW J:   To the butterfly. 

MR JACKSON:   The retractor plate ‑ ‑ ‑

GUMMOW J:   It is November ’92.  1083. 

MR JACKSON:   Yes, your Honour.  I am sorry.  At page 1082, you will see that he is speaking of a trial that took place, that is referred to in the period June ’92 to February ’93:  “there was a six month trial.”  That is at 1081, about line 25.  Your Honour will then see, page 1082, about line 12: 

before then, we had become aware of the concept of the retractor plate –

He said, he became aware – this is about line 19: 

of the retractor plate in a physical form on the demonstration vehicle in Glenelg in ’92. 

GUMMOW J:   There would have been no drawings. 

MR JACKSON:   I am sorry, your Honour? 

GUMMOW J:   There had been no drawings.  That is the last question on 1082. 

MR JACKSON:   No, that is so, your Honour, yes, because what happened in 1991 was presented in a schematic form, as he described it.  Could I also mention, finally, in relation to the evidence of Mr Brown which appears in volume 4 at page 824, some of Mr Brown’s evidence was, in a sense, not accepted because the judge thought he had not been in the business long enough to know at the relevant time, but this appears to be a part which was and I will take your Honours to the judge’s finding in that regard.

GUMMOW J:   He also came from your camp, did he not?

MR JACKSON:   Yes, your Honour.  With respect, none the worse for that, really, in the sense that he gave evidence and the judge is entitled to accept it or not and, in particular, in relation to what your Honour just said, at page 825 you will see in line 4 that he denied the proposition that this was something that had been put in his mouth by our side, in effect.  Could I say, your Honours, at page 824 at about line 13 he was speaking about February 1992, which was the relevant time, of course:

it didn’t occur to you to pull together the combination that is in the petty patent?‑‑‑No, I was not required to look at doing such a design.

Then in the next answer your Honours will see that he disagreed with the proposition:

that it would be by no means obvious to a design engineer to do so?‑‑‑Well I disagree I think it would have been.

Your Honours will see then the next question and answer.  He said that the first vehicle they built really “embodied most of those features” and then said in line 27:

No, what I am saying is if that had been the design requirement for the equipment that we were designing, the piece of equipment we would have designed would have been, I think, very similar to the one outlined in the patent.

And in the next answer at the top of page 825 he said it was true to say that he had formed that view since he was asked to give evidence but he “hadn’t had cause to think about it” before that.  That part of his evidence appears to have been accepted.  That is in volume 6 at page 1252, first of all.  Your Honours will see in the paragraph commencing at about line 19 the judge refers to him and then says he has difficulty accepting some of his evidence, and then at page 1254 in a passage at the top of the page said:

It is not entirely clear what Mr Browne meant by this answer –

which was some other answer –

but I do not take it as detracting from his views as to the integers of the claim being known in the industry at the relevant time and being features to which he would have resorted in the design of an appropriate vehicle.

Your Honours will see that he elaborates upon that in the next sentence.  Now, what we have submitted is that there was a considerable body of evidence which was available to justify that conclusion arrived at by the judge.  If one goes to the approach taken by the Full Court, what one sees, in our submission – if I can just take your Honours for a moment to the Full Court’s reasons.  First of all, at paragraphs 20 and 21 ‑ your Honours will see those in volume 6 at page 1291.  Their Honours refer to Justice Dixon in  Palmer v Dunlop Perdriau Rubber, the characteristic of a combination of “mutual relation”.  Then, your Honours, the passage from the 3M Case is referred to at page 1292 and 1293. 

In paragraphs 24 and 25 your Honours will see the combination test being applied, in our submission.  One sees then what we would submit is really that the Full Court has identified the correct test and has looked to see whether the judge had applied the right test and said there was evidence on which he could do so.

Your Honours, could I say just something in relation to the butterfly plate argument.  What we would submit is this, that the TWT proposals in 1991 did not just contain a group of separate integers.  They contained a particular combination of integers very similar, not the same as, those the subject of the claims in the patent.  But the question was whether the claims, the combination in the patent was obvious, using the sources of information available under section 7.  The evidence of Mr Richards, to which the Full Court refers in paragraphs 33 to 36 of its reasons, at pages 1296 to 1297, concerned various combinations of the integers and, your Honours, that is relevant to the observation which is then made at paragraph 40 that:

The addition of this last feature was said, both at first instance and on appeal, to constitute the inventive step of the combination patent –

because what is being spoken about is that there were various combinations that had existed in the past and what was said was that why this combination was a combination which was different was because of the matters that are referred to in paragraph 40. 

Your Honours, the butterfly plate no doubt was part of the TWT combination, but there is nothing, in our submission, to show that the absence of reference to it in the claims in this case did not mean that the combination in the claims was not obvious.  Your Honours, I am sorry I put that in a rather negative way.  What I am seeking to say is, whilst it was part of the TWT combination, the fact that it was not referred to as part of the combination in the claims did not mean that the actual combination in the claims itself was not obvious. 

Your Honours, there are two other matters with which I wish to deal. One concerns very briefly the Tidy Tea issue.  What we would simply seek to say in relation to that is that this is not an occasion where it is necessary for the Court to put down, if that be the appropriate course, the observation of Justice Burchett in Tidy Tea.  It may well be right, but it is irrelevant, in our submission, for present purposes and that is apparent, we would submit, from the fact that it was simply adverted to in passing by the Full Court in paragraphs 15 and 16.

Your Honours, the last thing I wanted to deal with is the question of commercial success.  Your Honours, what appeared was simply this, namely, that the family business used the system in that business.  Your Honours will see that in volume 2 ‑ ‑ ‑

GLEESON CJ:   Just before you go to the merits of this, what is your attitude of the application to add a ground of appeal?

MR JACKSON:   Your Honour, that is opposed and I was just going to give your Honours the reasons for that in a moment.  May I just say something about - this is something which goes to support those reasons.  Your Honours, what I was going to say about them was this, that what appeared was that the family used the system in its business.  Now, your Honours, will see that in volume 2 at page 293, paragraph 4.  Now, the “Solo Waste and other companies bearing the Richards name alone”, they are referred to in paragraph 3 on the preceding page, “I am a director of Solo Waste” and so on.

Your Honours, the weight to be attributed to commercial success depends on the circumstances and it is a matter on which there are differing views.  Could I give your Honours a reference in that regard to Lahore, Patents, Trademarks and Related Rights, volume 1 at page 13,045, under the heading “Commercial Success”.

Now, your Honours, the observation there is prefaced by the observation which appears at page 13,023, which is as follows:

A decision that a particular invention is or is not obvious, is a decision on the particular facts and the “law” as it relates to obviousness has been described as a “wilderness of single instances”.  The judges have, however, devised a number of tests to assist them in their consideration of questions relating to obviousness.  While these tests have their supporters, they also have their detractors.

There is a reference then, your Honours, under the heading “Commercial success” and what is put is that:

If the invention results in the introduction of a product which enjoys immediate commercial success it has been suggested that this may indicate that the invention is an advance over what was previously available and that it must therefore involve an inventive step.  However, critics of this “test” argue that commercial success is more likely to be attributable to advertising and effective marketing techniques than the inventive character of the product.

Your Honours, the point we would seek to make is that the weight to be attributed to commercial success must depend on a number of matters.  Here, your Honours, it could not have been more than a factor and we would submit that special leave should be refused in relation to adding that ground for a number of reasons.  First, the lateness of the application.  Secondly, the fact that, in order to deal with the matter, it will be necessary for the Court to examine, no doubt, transcripts, written submissions, and other matters.

In the end, your Honours, the question is simply one of the weight to be attributed to a particular factor.  Your Honours, a relevant matter in that regard is that it was not a ground of appeal in the Full Court and it is hardly surprising that the Full Court did not feel the need to deal with it specifically.  So that, your Honours, the matter would come to the Court afresh and really one would have a situation where an argument as to the weight to be given to a factor would become a ground for special leave.

CALLINAN J:   Mr Jackson, is there any case cited for the proposition that commercial success is to be attributed to advertising rather than inventiveness or novelty?

MR JACKSON:   Your Honour, may I check that?  Yes, in footnote 3 a number of cases are referred to.  Could I give your Honours the references now or I am happy to give your Honours copies of ‑ ‑ ‑

CALLINAN J:   Later is satisfactory.

GLEESON CJ:   I notice in one of the cases we were referred to this morning – and I cannot remember which one it was – the principle was stated in a rather more qualified way.  It was that commercial success of a device fulfilling a long‑felt want not previously met is a strong indication of inventiveness.

MR JACKSON:   Yes.  Your Honour, the feature about it, of course – I mean, this is where commercial success has its inherent limitations – is that the test that is provided for by section 7(2) is one which looks at the situation as at, or I think the words are “immediately prior to”, a particular date, so that, inherently, if one looks at commercial success after that date, then what one is looking to see is what is shown by commercial success.  Now, if there is a long‑felt need which has not been satisfied and there is commercial success in relation to the particular claim, the particular patent, the result which one would infer from that is that it had not been obvious.  There had been a problem, if I could put it that way, but not an obvious solution that someone had come to it.

On the other hand, if one has no more than that, there is commercial success.  It shows that what has come about has its utility, of course, but it may not show much more than that, with respect.  Your Honours, those are our submissions.

GLEESON CJ:   Thank you, Mr Jackson.  Yes, Mr Garnsey.

MR GARNSEY:   In relation to commercial success, your Honour, on the evidence here we would submit that the impact of advertising in relation to garbage trucks, given the size of the market about which Mr Richards and other people give evidence, is of little significance.  Secondly, your Honour, in relation to the evidence, the question of objections was considered at pages 722 to 724 of the appeal book and page 3.  The learned trial judge left it to Mr Crowe and myself to agree on the approach to be taken to evidence.  I do not recollect whether we had any discussions or not ‑ ‑ ‑

GLEESON CJ:   What are the competing possibilities as to the approach to be taken to evidence?

MR GARNSEY:   If your Honour pleases.  I will not seek to give evidence.  I do not recall any discussions; that is all I can say.  Perhaps we both threw our hands up and not proceeded.  The third matter is in relation to the conduct of the trial before the Full Court.  With your Honours’ permission, we will supply copies of the transcript of argument as well just for the sake of completeness, along with the submissions.

HAYNE J:   If you are going to do that, I for my part would be assisted if there were an abbreviated table of contents.  I do not suggest a detailed index, but a table of contents to those submissions would be of assistance.

MR GARNSEY:   If your Honour pleases.  I would seek merely to refer in fact to five pages.  I will indicate those, with the Court’s permission, at the commencement of the bundle which we say makes it abundantly clear that we conducted the case before the Full Court - and I do not recall it being differently before the trial judge - on the basis that the whole combination was inventive.  The written submissions completely support that in a number of paragraphs.

GUMMOW J:  For some reason or other, I think related to the special leave application, I have a copy of the ‑ ‑ ‑

MR GARNSEY:   Your Honour could not find page 60 of the transcript which was between, as the Chief Justice pointed out, pages 58 and 59.  It is in fact those pages about that when Justice Drummond says, “Isn’t the problem here, or the inventive step, the lid‑opening device on the transfer mechanism?”, and over three pages I say, “No, with respect”.

GUMMOW J:   What page is this, 50?

MR GARNSEY:   It is pages – I will give your Honour precisely the page ‑ ‑ ‑

GUMMOW J:    Do not take too ‑ ‑ ‑

MR GARNSEY:   Page 32, lines 7 to 10, and pages 40 to 41.  Then pages 60 to 61 to 62, in particularly 61, lines 10 to 35, and right over the page to the bottom of the page and, indeed, page 63, to line 10, where I replied to Justice Drummond about four times, if your Honour pleases.

GLEESON CJ:   That must be because he asked you four times.

MR GARNSEY:   Yes, your Honour, and he said he would keep asking.  Your Honour, as to that there is a passage in volume 6, page 1215, lines 1 to 10, which is, perhaps, the genesis of the lid‑opening device as the central matter of attraction for the trial judge of the Full Court.  That is the trial judge’s judgment, if your Honour pleases, volume 6, page 1215, lines 1 to 10.  Immediately preceding that in relation to the state of the art and cross‑contamination and what the problems were to be solved as the inventor saw it, there is a passage from Mr Richards’ affidavit of 29 June 1998 which the trial judge refers to, and he refers to Mr Richards’ affidavit as setting out that.  He refers to a paragraph 7.b.i. which is, in fact, not 7.b.1. because there is a rather Byzantine numbering section.  It is on page 261 of volume 2 of the appeal book, line 45, over to 262, line 10.

GLEESON CJ:   This may get back to something you dealt with this morning – I think it was this passage in Justice Dowsett’s reasons that deals with this that you took us to – but the claim did not specify the particular lid‑opening device, or any particular lid-opening device, did it? 

MR GARNSEY:   No. 

GLEESON CJ:   I think Justice Dowsett remarked upon the fact that on the assumption that the inventive step asserted was making provision in the system for a lid-opening device, when he was saying that was obvious, he was not saying that the particular lid‑opening device that you employed was obvious; he was simply saying that it was obvious that there should be a lid‑opening device. 

MR GARNSEY:   That is one construction, if your Honour pleases, but I think the genesis of his Honour’s remark really lies in what might be called cross‑contamination with another issue in the proceedings, and that was the failure to state the best method.  That was a big issue at trial and it was also one of the matters on which we lost at trial and we took on appeal and won on appeal.  The point there was that – I am probably doing an injustice to the point because I have not refreshed myself as to its details but it was, generally speaking, the fact that the water nozzle was the only way the invention could work.  I may be doing a slight ‑ ‑ ‑

GLEESON CJ:   I do not want to open any boxes, but is that the subject of the notice of contention?  Is that one of the subjects of the notice?

MR GARNSEY:   No, your Honour.

GLEESON CJ:   All right.

MR GARNSEY:   That was the subject of our appeal and we lost on that – I am sorry, we won on that on appeal, yes.

GLEESON CJ:   In a practical sense, if you were able to repel this claim of want of an inventive step, you would get a benefit out of casting the claim as widely as a lid‑opening device rather than specifying a particular lid‑opening device, would you not?

MR GARNSEY:   Yes.  Your Honour, when I say a benefit, we have never specified a particular lid‑opening device.  The three features say there must be a lid‑opening device on the loading mechanism to achieve the certain purpose, to open the lid and so that things work in accordance with the other integers, and we have always said that is the invention.  Mr Richards in his affidavit of ‑ ‑ ‑

GLEESON CJ:   Could you repeat that?  You always said what is the invention?

MR GARNSEY:   The combination is the invention which enables lifting a wheelie bin divided into two, opening the lid at an appropriate time during the loading cycle by a lid‑opening device on the lifting arm and emptying it

into the rest of the invention, that is a truck structured so that it has different compartments and so that the separation of waste and recyclables is maintained to the particular parts of the truck.

GLEESON CJ:   But Justice Dowsett, rightly or wrongly, said what was obvious was the provision for a lid‑opening device in combination with the other aspects of the system because the purpose of the lid‑opening device is to stop this cross‑contamination.

MR GARNSEY:   Yes, but that is the central part of our complaint.  I am indebted to your Honour for coming back to it at the end of the day.  We say that is a wrong way to put things and that is where we say that this is a significant case because to uphold the Full Court and Justice Dowsett is to sanctify the laundry‑list approach, which is quite contrary to the 3M Case and to the law relating to patentable combinations.  If your Honour pleases.

GLEESON CJ:   Thank you, Mr Garnsey.  We will reserve our decision in this matter and we will adjourn until 9.30 tomorrow morning in Sydney and 9.30 tomorrow morning in Melbourne.

AT 2.43 PM THE MATTER WAS ADJOURNED